Ex Parte Bhan et al

Board of Patent Appeals and Interferences

Jun 13, 2012

11014362 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/014,362 12/16/2004 Opinder Kishan Bhan TH2809 (US) 4663
23632 7590 06/13/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
06/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte Shell Oil Company
____________________

Appeal 2010-009553
Application 11/014,362
Inventors: Opinder Kishan Bahn and Scott Lee Wellington
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, CHUNG K. PAK and
TERRY J. OWENS, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009553
Application 11/014,362

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The Shell Oil Company (Applicant) appeals an Examiner’s decision
rejecting Claims 104-109. 35 U.S.C. §§ 6(b) and 134(a). Because we do not
perceive error in the Examiner’s decision that the subject matter of these claims
would have been obvious, we affirm.
The Claimed Subject Matter
Applicant claims an oil product having specified amounts of certain selected
ingredients per gram of oil. The oil includes at most 0.004 grams of oxygen, 0.003
grams of sulfur, 0.04 grams of nitrogen, and 0.2 grams of residue. The oil must
also have the following properties: a total acid number (TAN) of no more than 0.5
and an API Gravity of no more than 19. The ASTM test protocols used for
determining the amounts of each of the specified constituents and the values for the
specified properties are also stated in the claims. However, the use of the specific
standardized ASTM tests is not argued to patentably distinguish the claimed
subject matter over the prior art.
Exemplary Claim
Claim 104 is representative and reproduced below:
104. A crude product having, per gram of crude product:
at most 0.004 grams of oxygen, as determined by ASTM
Method E385;
at most 0.003 grams of sulfur, as determined by ASTM
Method D4294;
at most 0.04 grams of basic nitrogen, as determined by
ASTM Method D2896;
at least 0.2 grams of residue, as determined by ASTM
Method D5307; and
the crude product has a total acid number (TAN) of at
most 0.5, as determined by ASTM Method D664 and the API
gravity of the crude product is at most 19.
Appeal 2010-009553
Application 11/014,362

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Rejection
Claims 104 to 109 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bridges.1 Hodges2 and Collins3 were relied on by the Examiner in response to
certain arguments made by Applicant.
Bridges
Bridges describes a process for producing olefins for petroleum residua.
The Examiner specifically directs to the composition described in Table 3, at
Column 11. Answer, 3. That table describes a fractionated petroleum residuum
from West African crude oil. Bridges, 10:65-67. The residuum is said to have the
following:
Sulfur 0.2 wt %
Nitrogen 0.2 wt %
API Gravity 20.7
The Examiner also found that the distillation curve at Column 11, lines 12-25
showed a residue as defined by Applicant of about 0.35 gram per gram of oil.
Answer, 3.4
Differences between Bridges and the claimed subject matter
Comparison of the oil described in Table 3 of Bridges with the claimed
subject matter shows the following differences:

1 U.S. Patent 6,303,842 B1 issued Oct. 16, 2001.
2 U.S. Patent 2,581,102 issued Jan. 1, 1952.
3 U.S. Publication 2002/0125175 A1 published Sept. 12, 2002.
4 Applicant defines “residue” as the components that boil above 538ºC. Written
Description, 24:1-2. Bridges’ distillation table shows 40% or 0.4 grams/gram
remain at 524ºC and 30% or 0.03 grams/gram remain at 578ºC. A residue of 0.35
at 538ºC is a reasonable estimate. In any event, the residue is between 0.30 and
0.40 at 538ºC meeting the residue requirement of Claim 104 of at least 0.20
grams/gram of oil. 
Appeal 2010-009553
Application 11/014,362

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1. The amount of oxygen is unspecified;
2. The TAN is unspecified; and
3. The API gravity is 20.7 above the maximum permitted of 19.
Each difference is asserted by Applicant to patentably distinguish the claimed
product from the oil described by Bridges. See Brief 5.
The Examiner’s and Applicant’s positions
The Examiner concluded that these differences would not have rendered the
claimed subject matter unobvious. The Examiner finds that since TAN and oxygen
are unspecified, they should be presumed to be either minimal trace amounts or
zero and therefore meet the claim limitation of at most 0.5 and 0.004, respectively.
Answer, 4. With respect to the API gravity, the Examiner finds:
A slight difference between the claimed and Bridges value of
API gravity (19 versus 20.7) could be attributed to the different
techniques used for the determination of API. Bridges uses ASTM
D4052 whereas the Applicant uses ASTM D6822.
Id. at 7.
Applicant responds that the Examiner has not provided evidence to
substantiate his position that silence in Bridges would be understood by the
hypothetical person having ordinary skill in the art as indicative of no or trace
amounts of oxygen (Brief, 5-6) or minimal or zero TAN (id. at 7). Applicant also
argues that the Examiner has not provided evidence that the difference in API
density were due to the differences in the ASTM D4052 and D6822 testing
techniques. Id. at 8.
Analysis
Claim 104
With respect to the amount of oxygen, we determine that the Examiner’s
finding that the oxygen content is either zero or includes only insignificant trace
Appeal 2010-009553
Application 11/014,362

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amounts is reasonable. Bridges’ failure to identify oxygen as a significant
ingredient provides a sufficient basis to find that the oil contained none or only
insignificant trace amounts were present. In re Preda, 401 F. 2d 825, 826 (CCPA
1968)(In determining what a reference discloses, “it is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”). Applicant
has not directed us to evidence, nor even argued, that oil of the type described in
Bridges’ Table 3 would have been expected to have an oxygen content greater than
0.004 grams per gram of oil. The PTO does not have the facilities or resources to
procure and test the products of the prior art. See, In re Best, 562 F.2d 1252, 1255
(CCPA 1977). We think it would have been a relatively easy matter for Applicant
to have presented, for example, opinion testimony on the oxygen content of the
West African crude oil described in Bridges’ Table 3.
We also think that the Examiner’s finding that the difference in API gravity
was likely due to the different testing protocols is reasonable. Applicant used
ASTM D6822 to determine the API gravity. Written Description, 22:12-13.
Bridges used ASTM D4052. Bridges, 11, Table 3. We take official notice that the
techniques are in fact different. In ASTM D6822 the API gravity is determined by
thermohydrometer. ASTM D4052 uses a digital density meter to determine the
API gravity by changes in oscillation of an oil sample. One having ordinary skill
in the art would have expected that the different test methodologies would give
slightly different numerical values for the same oil. Applicant has not directed us
to evidence nor argued that the different test protocols would not have yielded
somewhat different API gravity values. Again the PTO does not have facilities to
perform comparative tests. Best, 562 F.2d. at 1255.
Appeal 2010-009553
Application 11/014,362

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Addressing the TAN limitation, the Examiner additionally relies on Collins.
Answer, 7. Collins notes that typical TAN values for oil are in the range of 0.5 to
4. Collins, ¶ 0002. Oils having a TAN in this range are said to cause corrosion
problems when the oil is heated to temperatures above 200ºC. Id. Collins teaches
that it is desirable to reduce the acidity of the oils to avoid corrosion. Collins,
¶ 0002. Collins describes a number of processes said to reduce TAN. Id. at
¶¶ 0003 - 0009. Collins also teaches that the TAN should preferably be reduced to
0.1-0.5. Id. at ¶ 0054.
To the extent that the oil described in Bridges’ Table 3 had a TAN of greater
than 0.5, it would have been obvious to reduce the TAN to below this level.
Bridges’ method of forming olefins from the oil distillates includes heating the
residuum to a temperature of 340 to 450º C. Bridges, 7:59-62. One having
ordinary skill in the art would have recognized that oils with a TAN above 0.5
would cause corrosion problems at those temperatures. Collins, ¶ 0002. The
person of ordinary skill in the art would have been motivated to lower the TAN to
0.1- 0.5, as taught by Collins, to minimize corrosion problems. Collins, ¶ 0054.
To the extent the residuum described by Bridges had a TAN above 0.5, it would
have been obvious to use the known techniques described by Collins to lower the
value to below 0.5 to minimize corrosion problems. Specifying a TAN of no
greater than 0.5 does not recite an unobvious distinction over the prior art.
The decision of the Examiner that the subject matter of Claim 104 would
have been obvious is affirmed.
Claims 105 – 109
Claims 105 -109 depend directly from Claim 1. Applicant does not assert
the additional subject matter of these claims as patentably distinguishing the claims
over the prior art. We, therefore, select Claim 104 as representative of Claims 105
Appeal 2010-009553
Application 11/014,362

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– 109 and affirm the rejection of those claims for the reasons stated with respect to
Claim 104. 37 CFR § 41.67(c)(1)(vii).
DECISION
The Examiner’s decision rejecting the subject matter of Claims 104 –
109 under 35 USC § 103(a) is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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