Ex Parte Marcotullio et al

Board of Patent Appeals and Interferences

Jan 19, 2012

10468831 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARMANDO MARCOTULLIO, RICCARDO RAUSA,
and ALESSANDRO LEZZI
____________

Appeal 2011-002490
Application 10/468,831
Technology Center 1700
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and KAREN M.
HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-002490
Application 10/468,831

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 9-13 under 35 U.S.C. § 103(a), as being unpatentable
over Di Lullo (US 5,445,179, issued Aug. 29, 1995) in view of Laganá (US
4,983,187, issued Jan. 8, 1991), as evidenced by Hayes (US 4,886,519, issued Dec.
12, 1989).2 An oral hearing was held on January 11, 2012. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
“[T]he present invention relates to the preparation of aqueous dispersions of
heavy oil residues suitable for being transported, usually in pipelines, and for
undergoing combustion with a reduced emission of harmful substances,
particularly SOx.” (Spec. 1:10-14.) Claim 9, the sole independent claim on appeal,
is representative of the inventive process, and is reproduced below from the Claims
Appendix to the Appeal Brief:
9. A process for combustion of heavy oil residues with a low emission of
SOx comprising:

heating the heavy oil residues at a temperature at least equal to a softening
point of the heavy oil residues;

preparing a dispersion of the heated heavy oil residues in water, and

combusting the dispersion of the heavy oil residues in water;

wherein the heavy oil residues have a softening point higher than 25°C, and
wherein the dispersion of the heavy oil residues in water comprises:

1 Final Office Action mailed Jan. 7, 2010 (“Final”).
2 Appeal Brief filed May 25, 2010 (“App. Br.”), 3.
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Application 10/468,831

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one or more dispersing agents selected from organic sulfonates of alkali
metals or of ammonium;

one or more desulfurizing agents selected from the group consisting of
CaCO3, MgCO3, dolomite and relative mixtures; and

one or more desulfurizing agents with stabilizing and anticorrosive
properties selected from the group consisting of MgO, Mg (OH)2, CaO, Ca(OH)2
and relative mixtures; wherein

the dispersion of heavy oil residue in water has a water content of at least
15%,

the dispersing agent in the form of the sodium salt has the following
properties:

(A) a sulfur content of at least 10% by weight;

(B) a solubility in water at 20°C of at least 15% by weight;

(C) a reduction in the surface tension in water, at a concentration of
1% by weight, lower than 10%;

the desulfurizing agents are present in a quantity ranging from 0.5 to 3.0
moles with respect to the sulfur contained in the heavy oil residue, and
the desulfurizing agents with stabilizing and anticorrosive properties are
present in a quantity ranging from 0.04% by weight to 0.4% by weight with
respect to the total suspension.
The dispositive issue in this appeal is: does a preponderance of the evidence
support the Examiner’s determination that one of ordinary skill in the art would
have been motivated to incorporate Laganá's desulfurizing agents in the dispersion
preparation process of Di Lullo, and that one of ordinary skill in the art would have
had a reasonable expectation of success in so doing?
“Di Lullo describes a process for recovering and causing highly viscous
petroleum products to flow through drilled well bores or pipelines.” (App. Br. 4
Appeal 2011-002490
Application 10/468,831

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(citing Di Lullo col. 1, ll. 7-19).) Di Lullo discloses preparing a dispersion of
heavy oil residues in water, but does not explicitly disclose combusting the
dispersion. (Ans. 3 4-5.)
The Examiner finds Laganá discloses “the addition of [] desulfurizing agents
[to] provide[] a composition that is both easily transportable via pipeline and one
that can be burned without the release of harmful substances such as SOx.” (Ans. 6
(citing Lagana col. 2, ll. 5-28).)
The Examiner determines:
the person having ordinary skill in the art of processes for the
preparation of dispersions of heavy oil residues in water would have
been motivated to incorporate use of the desulfurizing agents of
Laganá in the dispersion preparation process of Di Lullo in order to
obtain a composition that was both easily transportable and burnable
with a low emission of harmful substances.
Finally, the person having ordinary skill in the art of processes
for the preparation of dispersions of heavy oil residues would have
had a reasonable expectation of success in incorporating the use of
Laganá's desulfurizing agents in the dispersion preparation process of
Di Lullo because both Laganá and Di Lullo are directed to processes
for preparing aqueous dispersions of petroleum-derived products that
are easily transportable via pipeline.

(Ans. 6.)
Appellants contend one of ordinary skill in the art would not have been
motivated to incorporate, or had a reasonable expectation of success in
incorporating Laganá's desulfurizing agents in Di Lullo’s dispersion preparation
process to produce a combustible fuel.
In support of this contention, Appellants argue Di Lullo is directed to
transport and storage of a viscous liquid only, and does not disclose or suggest a

3 Examiner’s Answer mailed Aug. 19, 2010.
Appeal 2011-002490
Application 10/468,831

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material which is suitable for combustion, or that the fluidized materials would
remain stable at elevated temperatures as is necessary when directed to a
combustion zone. (App. Br. 4.)
Appellants have persuaded us of error in the Examiner’s contention that one
of ordinary skill in the art would have understood from the Di Lullo and Hayes4
disclosures that heavy oil residues can be burned safely and efficiently. (Compare
Rep. Br. 1-2 with Ans. 7.)
Appellants also argue Laganá’s coal or petroleum coke is a solid and
completely different from Di Lullo’s heavy oil residues. More specifically,
Appellants contend
one of ordinary skill in the art will recognize that coke as a
carbonaceous solid, is relatively pure carbon. The coking process
effectively eliminates hydrocarbons or the hydrocarbon structure of
the petroleum source material. Coke, therefore, must have chemical
and physical properties which significantly differ from the viscous
petroleum products addressed by Di Lullo. Accordingly, a process to
prepare the solids slurry for transporting to a combustion chamber and
burning addresses different problems due to the physical differences
between the viscous hydrocarbon and the carbonaceous solid.

(App. Br. 4.)
The Examiner concedes “there are differences between coke and
hydrocarbon residues - i.e. coke and hydrocarbon residues are not identical in
composition.” (Ans. 8.) However, the Examiner maintains the ordinary artisan

4 The Examiner cites Hayes as “evidence” in further support of the rejection based
on Di Lullo and Laganá. It appears that this reference should have been positively
recited in the statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970) (Where a reference is relied upon to support a rejection, even in a
minor capacity, there would appear to be no excuse for not positively including
that reference in the statement of the rejection).

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would still expect Laganá’s process for treating carbonaceous solids to be
applicable to Di Lullo’s heavy oil residues, since these residues may also include
solids. (See Ans. 8-9.)
Appellants have refuted the Examiner’s contention by explaining that
Di Lullo’s “particles [are] of a viscous hydrocarbon which . . . . will soften and
even fluidize with an increase in temperature[, while] . . . neither coke nor coal will
show such variation in rheological character.” (Rep. Br. 2.)
In sum, we find a preponderance of the evidence fails to support the
Examiner’s conclusion of obviousness. Therefore, we do not sustain the rejection
of claims 9-13 under 35 U.S.C. § 103(a), as unpatentable over Di Lullo in view of
Laganá, as evidenced by Hayes.
REVERSED

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