ExxonMobil loses in appeal of re-exam 95/001,387; related to US 6,870,072

There was another chapter to the Exxon/Lubrizol saga in the PTAB decision related to re-exam 95/001,387.

This proceeding arose from a request by UOP for an inter partes
reexamination of U.S. Patent 6,870,072 B2 (“’072 patent”).4 The ’072
Patent is entitled “Heat Recovery in an Olefin Production Process,” issued to
David R. Lumgair and James Harding Beech (Mar. 22, 2005), and is
assigned to ExxonMobil Chemical Patents Inc.

As an AIA footnote:

The America Invents Act states that the provisions of 35 U.S.C. §§ 134 and
315 as in effect on September 15, 2012 shall continue to apply to inter
partes reexaminations that are requested before September 16, 2012. See
Pub. L. No. 112-29, §§ 6(c)(3)(C) and 7(e).

The bottom line: ExxonMobil lost.

A key claim element:

removing heat from the effluent stream while
maintaining the effluent stream above the dew point of the gas
phase; and

With discussion:

Patent Owner argues against the anticipation rejection “because
Kuechler does not disclose or enable the feature of ‘removing heat from the
effluent stream while maintaining the effluent stream above the dew point of
the gas phase.’” App. Br. 8. We disagree for the following reasons.
Although Kuechler does not expressly mention the dew point as
pointed out by Patent Owner (App. Br. 10), Kuechler expressly discloses a
temperature for its effluent stream that is, in fact, above the dew point. More
specifically, in Example 1, effluent stream (11) has a temperature of
407.9º C at a pressure of 275.8 kPa. (...)

Patent Owner argues that the dew point as calculated by Dr. Senetar
does not account for all variables, including the presence of the catalyst
fines, which can increase the dew point. App. Br. 12-13. However, Patent
Owner does not present persuasive evidence to support its position. For
example, Patent Owner does not present adequate evidence that such
variables would have affected the calculations made by Dr. Senetar, let alone
adequate evidence regarding the extent that such variables would have
affected the calculations made by Dr. Senetar. In short, Patent Owner does
not present adequate evidence that Dr. Senetar’s calculations were wrong.
Arguments of counsel cannot take the place of evidence lacking in the
record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997). (...)
Patent Owner also states:

while Kuechler does disclose removing heat from the effluent
stream, and strictly speaking the temperature is above a
calculated dew point, Kuechler does not disclose doing so
“while maintaining the effluent stream above the dew point of
the gas phase” enough so that fouling does not occur.

App. Br. 10 (emphasis added). This argument is not persuasive, as it is not
commensurate with the scope of claim 1, which only requires that the
effluent stream is maintained above the dew point of the gas phase, without
specifying a minimum amount by which the effluent stream must be above
the dew point (...)

Patent Owner relies on Figure 1 of the ’072 Patent, which is a graph
of water condensation versus temperature for the effluent stream of a
methanol to olefin reaction at 280 kPa to argue that the effluent stream of
Kuechler is not completely in a gaseous form. App. Br. 11; ’072 Patent col.
3, ll. 49-51, col. 15, ll. 49-50. The graph shows water condensation
beginning when the temperature drops below 250º F10 and then increasing
gradually to 100% condensation as the temperature drops to about 160º F.
Fig. 1. From this, Patent Owner argues that “[t]here is not a ‘bright line’
demarcation between the effluent being completely gaseous and being
completely condensed. . . . Hence, there is a need to bring the temperature
of the effluent stream high enough above the dew point to avoid such
condensation.” App. Br. 11.

We are not persuaded by Patent Owner’s arguments. The effluent
stream (11) of Kuechler is 407.9º C -- well above both the 120.1°C dew
point calculated by Dr. Senetar and the 250º F (~120º C) dew point shown in
Figure 1 of the ’072 Patent. (...)

Patent Owner argues that “one skilled in the art would have to assume
that the effluent in the heat exchanger (8) and stream (12) of Kuechler must
at least partially condense.” App. Br. 10 (bold and underlining added).



Of declarations:


Patent Owner also urges us to rely on a declaration of its witness,
Thomas H. Colle, Ph.D., instead of the declaration of Dr. Senetar submitted
by Requester, stating:
The only thing that Dr. Senetar opines on with respect to
dew point is to calculate the dew point of the effluent stream in
the Kuechler patent example. Dr. Senetar makes no comment
with respect to whether or not the dew point was of any
significance with respect to the oxygenation process. The
Senetar declaration does not support the Requester's or the
Examiner's theory as to why the Kuechler patent inherently
teaches the processes claimed in the '072 patent. . . .
On the other hand, Dr. Colle, Patentee's expert,
specifically opines on whether or not the Kuechler patent would
be understood by the ordinary artisan to contain an enabling
disclosure with respect to the importance of dew point vis a vis
catalyst fine fouling. Dr. Colle concludes that there is no
mention of such a concept in the Kuechler patent.
App. Br. 12. These arguments are not persuasive. Anticipation requires the
disclosure of all elements of a claim as arranged in the claim. SynQor, Inc.
v. Artesyn Tech., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). Kuechler does
this regardless of whether the Kuechler inventors recognized that practicing
their disclosure would prevent or reduce fouling. “Inherency is not
necessarily coterminous with the knowledge of those of ordinary skill in the
art. Artisans of ordinary skill may not recognize the inherent characteristics
or functioning of the prior art.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).

For the foregoing reasons, we sustain the rejection of claims 1-11, 17-
24, 26-43, 45-54, 56-58, 60-63, 66, 67, and 69-75 as anticipated by
Kuechler.


IPBiz notes the following:

Since we sustain the rejection of claims 1-11, 17-24, 26-43, 45-54, 56-
58, 60-63, 66, 67, and 69-75 as anticipated by Kuechler, we also sustain
their rejection as unpatentable over Kuechler. See Structural Rubber Prods.
Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984) (“a disclosure
that anticipates under § 102 also renders the claim invalid under § 103, for
‘anticipation is the epitome of obviousness’”) (quoting In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982)).

Of dependent claims:

Patent Owner does not present any arguments with respect to claims
12-16, 25, 55, 59, 64, and 65 beyond the unpersuasive arguments regarding
the independent claims from which they depend. App. Br. 15-19.
Accordingly, we also sustain the rejection of claims 12-16, 25, 55, 59, 64,
and 65 as unpatentable over Kuechler.


Also note:

Patent Owner does not present any arguments with respect to any of
the rejected claims beyond the unpersuasive arguments regarding the
independent claims from which they depend. App. Br. 19 (“Patentee
traverses this rejection for the same reasons as stated above with respect to
Kuechler . . . what is still not disclosed is the step: ‘removing heat from the
effluent stream while maintaining the effluent stream above the dew point of
the gas phase.’”) Accordingly, we sustain the rejection of claims 1-67, 69-
89, and 91-96 as unpatentable over Kuechler and Miller.

Even when ExxonMobil won on a point, the bigger battle was still lost:


Although Patent Owner persuades us that the stated rationale for
combining Mulvaney and Kuechler is insufficient, it has failed to persuade
us that the claims are patentable over Mulvaney and Jorgensen. The Board
may rely on less than all of the references applied by the Examiner in an
obviousness rationale without designating it as a new ground of rejection. In
re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458
n.2 (CCPA 1966). Indeed, the Examiner presented two different rationales
for combining the references, and one of these rationales is sufficient to
establish obviousness of the claimed subject matter.


As to 112 P 2:

The Examiner rejected claims 76-84 as being indefinite in violation of
35 U.S.C. § 112, ¶ 2 (2002). RAN 10. The Patent Owner does not argue
that these claims are not indefinite. App. Br. 28. Rather, the Patent Owner
merely points out that it submitted amendments that it believes would
overcome the rejection that were not entered by the Examiner. App. Br. 28.
Thus, we summarily affirm the Examiner’s rejection of claims 76-84 under
35 U.S.C. § 112, ¶ 2.

Note footnote 7:

The Appeal Brief includes a section entitled “Separate Patentability of the
Dependent Claims” that provides brief arguments with respect to certain
claims, including claims 23, 24, 58, and 73-75 rejected as anticipated by
Kuechler. App. Br. 26. Because the arguments presented in that section are
not specific to any particular rejection, see App. Br. 26-27, we also address
these claims separately below.