Ex Parte Spicer et al

Patent Trial and Appeal Board

Nov 25, 2013

11356475 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/356,475 02/17/2006 Dave B. Spicer 2006B027 3932
23455 7590 11/25/2013
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
ROSATI, BRANDON MICHAEL
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
11/25/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DAVE B. SPICER and NICHOLAS G. VIDONIC
____________________

Appeal 2011-013078
Application 11/356,475
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Dave B. Spicer and Nicholas G. Vidonic (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, 4-18,
20-25, and 29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An outlet fitting for a double-pipe heat exchanger, said heat
exchanger comprising a coolant tube and a process gas flow
passage, said outlet fitting comprising an inlet portion, an outlet
portion, and an inner element in the form of a low angle
diffuser extending and expanding in cross-section between said
inlet portion and said outlet portion, and a linear thermal
expansion portion at the inlet portion consisting of a gap (A)
between said inner element and said coolant tube to allow for
thermal expansion of said coolant tube and said inner element
when in the presence of heated process gas, said gap (A)
effective to avoid both inner element contact with said coolant
tube and formation of eddies, wherein said outlet fitting is
configured to pass said process gas from said double-pipe heat
exchanger to an outlet pipe.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Woebcke
Nasser
Fruck
Albano
Brücher
US 3,583,476
US 3,610,330
US 4,400,019
US 5,464,057
US 5,732,981
Jun. 8, 1971
Oct. 5, 1971
Aug. 23, 1983
Nov. 7, 1995
Mar. 31, 1998
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Rejections
Appellants request our review of the following rejections under
35 U.S.C. § 103(a):
(1) claims 1, 2 , 4, 7, 9-18, 20, 23, and 25 as being unpatentable over
Brücher and Albano;
(2) claims 5, 6, 21, and 22 as being unpatentable over Brücher, Albano,
and Woebcke;
(3) claims 8 and 24 as being unpatentable over Brücher, Albano, and
Fruck; and
(4) claim 29 as being unpatentable over Brücher, Albano, and Nasser.
OPINION
Rejection (1)
In contesting this rejection, Appellants present arguments directed to
claims 1 and 18, and provide separate arguments for claim 2, and for claims
7 and 23. Appellants do not present any separate arguments for claims 4, 9-
17, 20, and 25 apart from claims 1 and 18. Thus, in accordance with
37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 to decide the appeal of
this rejection as to claims 1, 4, 9-18, 20, and 25. We separately address
Appellants’ arguments directed to claim 2. We select claim 7 to decide the
appeal of the rejection as to claims 7 and 23.
Appellants assert that the Examiner determined it would have been
obvious to turn the modified structure of Brücher and Albano around 180
degrees and connect it to the outlet of a heat exchanger. App. Br. 14-15.
Appellants contend that the Examiner’s logic in this regard fails to
appreciate the difference between inlets and outlets. App. Br. 15.
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Appellants’ assertion appears to be premised on a misapprehension of
the Examiner’s position in rejecting claim 1. The Examiner did not
determine it would have been obvious to turn the modified structure of
Brücher and Albano around 180 degrees, and the Examiner’s rejection does
not rely on such a determination. Rather, the Examiner found that there is
no structural difference between the claimed outlet fitting and the modified
structure of Brücher and Albano. See Ans. 5.
Appellants argue that the Spicer Declaration1 shows that the
distinction between an inlet fitting and an outlet fitting is important. App.
Br. 15. The Appeal Brief does not cite to any specific portion of the Spicer
Declaration as support for this argument. However, item 3 of the Spicer
Declaration addresses this issue. Spicer states therein that the distinction
between an inlet fitting for a heat exchanger and an outlet fitting for a heat
exchanger is important, because in the inlet fitting of a quench exchanger of
an ethylene furnace, the process gas is still reacting. Thus, it is desirable to
minimize the residence time of the process gas, while generating low
pressure drop, to maximize selectivity of the reaction to ethylene. Spicer
states that, for that reason, inlet fittings for single-tube, double pipe
exchangers of the type illustrated by Brücher are typically of a single
diameter, equal to the quench exchanger process tube diameter. Spicer
Decl., item 3. Spicer further states that, by contrast, additional residence
time at the outlet will not result in a drop in selectivity to ethylene, because
the reaction has been quenched (stopped). Id. Thus, Spicer avers that some

1 “DECLARATION UNDER 37 C.F.R. 1.132” by David B. Spicer (one of
the co-inventors of the present application), dated January 20, 2009.
Evidence App’x.
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choices for geometry of a quench exchanger outlet fitting “are not
economically realistic for the inlet fitting.” Id.
In other words, the Spicer Declaration points out that a designer faces
some constraints in the geometry of a quench exchanger inlet fitting that are
not of concern in designing a quench exchanger outlet fitting. That fact does
not refute the Examiner’s position that the modified fitting of Brücher and
Albano is not structurally different from the outlet fitting of claim 1 and
“would function the same as [Appellants’ fitting] if utilized as an outlet
based on the structural characteristics.” Ans. 5.
Relying on the Spicer Declaration, Appellants argue that a change in
the inside diameter between the heated outlet pipe from the furnace and the
heat exchanger inlet would be detrimental, because an object of Brücher’s
configuration is to minimize the residence time of the gas through the inlet
region. App. Br. 15. Thus, according to Appellants, “the proposed
modification does not appear to be supportable by the reference.” Id.
As discussed above, the Spicer Declaration emphasizes the
importance of minimizing residence time, while generating low pressure
drop, in the inlet fitting, in order to maximize selectivity of the reaction to
ethylene. Spicer Decl., item 3. However, the Spicer Declaration does not
state that a change in inside diameter between the heated outlet pipe from the
furnace and the heat exchanger inlet would be detrimental, as Appellants
contend. Albano evidences that it is possible to include a convergent section
in the inlet fitting to the quench heat exchanger without necessarily raising
the pressure drop or increasing residence time in the inlet. Albano, col. 1, l.
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66 – col. 2, l. 11; col. 3, l. 34 – col. 4, l. 1.2 Thus, Appellants’ argument
does not identify error in the Examiner’s rejection.
Appellants also argue that the Examiner’s proposal to modify the inlet
fittings of Brücher and Albano and reverse the resulting device for use as an
outlet constitutes impermissible hindsight reconstruction. App. Br. 15. This
argument is not convincing, because, as discussed above, the Examiner does
not propose reversing the device of Brücher and Albano for use as an outlet.
Appellants additionally contend that Brücher and Albano are non-
analogous art, because they are directed to inlet fittings for heat exchangers,
in contrast to the present invention, which is directed to an outlet fitting for a
heat exchanger. App. Br. 16. Appellants add that “the thermal
environments and considerations for design of inlet and outlet fittings for
heat exchangers downstream of a steam cracking furnace are vastly
different.” App. Br. 17. These arguments fail to persuade us that the
Examiner’s determination that Brücher and Albano are in the same field of
endeavor (heat exchangers) as the present invention is unreasonable. See
Ans. 12.
Appellants argue that “the problem supposedly solved by the
Examiner’s proposed combination (i.e. to increase the velocity of the coolant
into coolant tubes) is entirely different from that solved by the presently
claimed invention (minimizing problems resulting from thermal stress and
erosion).” App. Br. 17. This argument fails to identify error in the rejection.
“In determining whether the subject matter of a patent claim is obvious,

2 Albano discloses an inlet chamber that permits distribution to multiple
small quencher tubes, rather than to a single large diameter tube, in order to
cool the gas leaving the cracking furnace as rapidly as possible, thereby
maximizing olefin yield and minimizing fouling. Col. 1, ll. 26-35, 61-66.
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neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Appellants additionally argue that even when combined as proposed
by the Examiner, Brücher and Albano “fail to disclose or suggest each and
every claim limitation.” App. Br. 17. Specifically, Appellants reiterate that
Brücher and Albano are directed to inlet portions, not outlet portions, and
assert that neither reference discloses or suggests reversing these. App. Br.
17-18. This argument is not convincing. As discussed above, Appellants
fail to show error in the Examiner’s finding that the modified fitting of
Brücher and Albano is not structurally different from the outlet fitting of
claim 1 and “would function the same as [Appellants’ fitting] if utilized as
an outlet based on the structural characteristics.” Ans. 5. The Examiner
does not propose reversing the arrangements of Brücher and Albano.
Appellants additionally allege that Brücher and Albano fail to disclose
or suggest “a linear thermal expansion portion at the inlet portion consisting
of a gap (A) between said inner element and said coolant tube,” as called for
in claim 1. App. Br. 18. Specifically, Appellants argue that a skilled artisan
would not have modified the Brücher device by removing the O ring, as
proposed by the Examiner (Ans. 5), because to do so would destroy the
functioning of the device. App. Br. 19. Further, Appellants point out that
the O ring seal “represents [Brücher’s] actual advance over the prior art
known at the time.” App. Br. 19 (further quoting Brücher, col. 1, ll. 8-28).
We do not agree that removing the O ring would destroy the
functioning of the device. As noted in the background of Brücher, the
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known joint of German Patent 3 910 630, which comprises a gap between
the refrigerated pipe and the interior section of the unrefrigerated pipe, but
lacks an O ring, “has been proven.” Col. 1, ll. 7-10, 19-20. Thus, such a
device does function, albeit with the undesirable possibility of gas from the
unrefrigerated pipe leaking into the insulation through the gap, and solids
simultaneously precipitating out of the gas and accumulating on the
insulation to the detriment of its effectiveness. Col. 1, ll. 20-24. As such,
the arrangement proposed by the Examiner (Brücher’s device modified to
omit the O ring) was known in the art at the time of Appellants’ invention.
A person of ordinary skill in the art reading the disclosure of Brücher would
have immediately envisaged either a joint comprising a gap and an O ring to
prevent hot gas from the unrefrigerated pipe from penetrating into the space
between sections 5 and 6 as disclosed by Brücher (col. 2, l. 67 – col. 3, l. 3),
or a less preferred arrangement without an O ring (and thus also without the
feature of gas penetration prevention). The Examiner’s proposed
modification and articulated reasoning (Ans. 5) therefore have rational
underpinnings.
Appellants argue that the Examiner has too easily dismissed
functional language within the body of the claim. App. Br. 20. This line of
argument is not convincing. “A patent applicant is free to recite features of
an apparatus either structurally or functionally . . . Yet, choosing to define an
element functionally, i.e., by what it does, carries with it a risk.” In re
Schreiber, 128 F.3d 1473, 1478 (internal citation omitted). Once the
Examiner establishes a reasonable basis that the prior art is capable of
performing the claimed function, the burden shifts to the applicant to show
that the prior art structure is not capable of performing the claimed function.
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Id. Where the claimed and prior art products are identical or substantially
identical, “the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The
fairness of this burden “is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.” Id. The Examiner
found that Brücher discloses a fitting for a double pipe heat exchanger. Ans.
4; see Brücher, col. 1, l. 64 (identifying refrigerated pipe 2 as “a double
pipe”). The Examiner also found that Brücher discloses a gap and that the
device is capable of performing the functions of allowing for thermal
expansion and avoiding both inner element contact with the coolant tube and
formation of eddies. Ans. 4. Appellants do not provide any technical
explanation or evidence showing error in the Examiner’s finding that
Brücher’s device has such capability.
For the above reasons, Appellants’ arguments in their briefs fail to
apprise us of error in the rejection of claim 1. We thus sustain the rejection
of claim 1 and of claims 4, 9-18, 20, and 25 as unpatentable over Brücher
and Albano.
In rejecting claim 2, the Examiner found that Brücher’s outer element
(core 3) is attached to the inner element at a first end and further is rigidly
attached to the coolant tube (unrefrigerated tube 1) at a second end. Ans. 5.
In responding to Appellants’ assertion that the Examiner “committed a
factual error by mistakenly identifying [core 3] of Brücher” as the claimed
“outer element” (App. Br. 22), the Examiner conceded error in relying on
core 3 as the claimed “outer element.” Ans. 15. Instead, the Examiner
clarifies that Brücher’s jacket 4 is the claimed “outer element.” Id.
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However, as pointed out by Appellants, Brücher’s jacket 4 forms part of the
cooling tube, and thus is not downstream of and rigidly attached to the
coolant tube at a second end, as called for in claim 2. App. Br. 22-23. Thus,
the Examiner’s reliance on jacket 4 as the “outer element” of claim 2 is in
error. We therefore do not sustain the rejection of claim 2 as unpatentable
over Brücher and Albano.
In rejecting claims 7 and 23, the Examiner pointed to the bottom
portion of Brücher’s refrigerated tube 2 extending below the shoulder that
sits on the O ring 13 as satisfying the “centering ring” limitation of claims 7
and 23. See Ans. 6 (stating, “the region as indicated above have the same
structural features as a ring”).3 This bottom portion of Brücher’s
refrigerated tube 2 is an integral part of the structure the Examiner calls the
“cooling tube” (Ans. 4), and thus is not a centering ring of the outlet fitting
“connected to said coolant tube,” as called for in claims 7 and 23. We do
not sustain the Examiner’s rejection of claims 7 and 23 as unpatentable over
Brücher and Albano.
Rejection (2)
In rejecting claims 5, 6, 21, and 22, the Examiner relies on the
teachings of Woebcke (col. 1, ll. 71-75) for guidance as to the diffuser angle
in the combined device of Brücher and Albano. Ans. 8-9. The passage of
Woebcke cited by the Examiner discloses a diffuser nozzle in the hot
effluent flow passage of a heat exchanger having a diverging angle or an
equivalent diverging angle of 4-10 degrees. The Examiner’s combination of
Brücher and Albano, however, relies on a converging portion of an inlet

3 The reference to “the region as indicated above” ostensibly refers to the
region labeled “ring” in the annotated figure on page 4 of the Non-final
Office Action, mailed April 2, 2008. See id. at 5.
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chamber for a heat exchanger (quencher) to satisfy the claimed “diffuser.”4
Thus, it is not apparent, and the Examiner has not adequately explained, why
Woebcke’s teachings directed to a diffuser nozzle would be pertinent to a
converging portion of an inlet fitting for a heat exchanger. For that reason,
Appellants’ position that a skilled artisan would not look to Woebcke’s
teachings regarding diffuser nozzles to modify the inlet fitting of Brücher
and Albano (App. Br. 25) is well taken. We do not sustain the rejection of
claims 5, 6, 21, and 22 as unpatentable over Brücher, Albano, and Woebcke.
Rejection (3)
The Examiner’s application of the additional teachings of Fruck fails
to overcome the deficiency in the rejection of claims 7 and 23, from which
claims 8 and 24 depend. We thus do not sustain the rejection of claims 8
and 24 as unpatentable over Brücher, Albano, and Fruck.
Rejection (4)
Claim 29 is directed to a system for the production of ethylene,
comprising an ethylene furnace and double-pipe heat exchanger, wherein the
heat exchanger comprises a coolant tube with a process flow gas passage
centered therein, and an outlet fitting. Even if the device of Brücher and
Albano were combined with Nasser as proposed by the Examiner, a person
of ordinary skill in the art would install the Brücher/Albano heat exchange
device in the orientation described by Brücher and Albano, with the fitting
comprising the converging/diffuser portion being upstream of the
refrigerated pipe/heat exchanger, not downstream so as to be “configured to
pass said heated process gas from said double-pipe heat exchanger to an

4 The converging portion is a diffuser when viewed in reverse as an outlet
fitting.
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outlet pipe,” as called for in claim 29. In other words, claim 29 affirmatively
requires the coolant tube and outlet fitting to be arranged with the outlet
fitting disposed downstream of the coolant tube; it is not enough that the
modified fitting of Brücher and Albano is not structurally different from the
Appellants’ claimed outlet fitting and “would function the same as
[Appellants’ fitting] if utilized as an outlet based on the structural
characteristics” (Ans. 5). The Examiner has not articulated any reason why
a person of ordinary skill in the art would have been prompted to install the
modified fitting/heat exchanger of Brücher and Albano in an ethylene
production system with an ethylene furnace in the arrangement called for in
claim 29.
For the above reasons, we agree with Appellants that Nasser fails to
cure the deficiencies of the combination of Brücher and Albano vis-à-vis the
subject matter of claim 29. App. Br. 27. We do not sustain the rejection of
claim 29.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4-18, 20-25, and 29 is
affirmed as to claims 1, 4, 9-18, 20, and 25, and reversed as to claims 2, 5-8,
21-24, and 29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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