Ex Parte Bhan et al

Patent Trial and Appeal Board

May 30, 2013

11014365 (P.T.A.B. May. 30, 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.
11/014,365 12/16/2004 Opinder Kishan Bhan TH2820 (US) 4665
23632 7590 05/30/2013
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
05/30/2013 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 OPINDER KISHAN BHAN and
SCOTT LEE WELLINGTON
____________

Appeal 2011-012361
Application 11/014,365
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, 4-18, and 46-48. We have jurisdiction under 35
U.S.C. § 6.
STATEMENT OF THE CASE
Claims 1is representative of the subject matter on appeal and is set
forth below:

1. A method of producing a crude product, comprising:
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Application 11/014,365

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contacting a crude feed with one or more catalysts at a first
temperature followed by contacting at a second temperature to produce a
total product that includes the crude product, wherein the crude product is
a liquid mixture at 25°C at 0.101 MPa, the crude feed having a TAN of at
least 0.3 and the crude feed and the crude feed [sic] having a C5
asphaltenes content of at least 0.04 grams of C5 asphaltenes per gram of
crude feed; and controlling contacting conditions such that the first
contacting temperature is at least 30°C lower than the second contacting
temperature, and the crude product has a TAN of at most 90% relative to
the TAN of the crude feed, wherein TAN is as determined by ASTM
Method 0664 and the C5 asphaltenes content in the crude product is
reduced relative to the C5 asphaltenes content of the crude feed as
determined by ASTM Method D2007.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hensley, Jr. 4,395,328 Jul. 26, 1983
Lindsay 4,729,826 Mar. 8, 1988
Halbert 5,910,242 Jun. 8, 1999

THE REJECTIONS
1. Claims 1, 2, and 17 are rejected under 35 U.S.C. §102(b) as
anticipated by Lindsay, as evidenced by Halbert and Hensley.
2. Claims 4-16, 18, and 46-48 are rejected under 35 U.S.C. §103(a) over
Lindsay in view of Halbert and Hensley.

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ISSUE
Did the Examiner err in determining that Lindsay anticipates the
claimed subject matter, and in particular, the aspect of claim 1 pertaining to
(1) the “crude feed having a TAN of at least 0.3”;
(2) the “crude feed having a C5 asphaltenes content of at least 0.04 grams of
C5 asphaltenes per gram of crude feed”;
(3) the “crude product has a TAN of at most 90% relative to the TAN of
the crude feed”; and
(4) the “C5 asphaltenes content in the crude product is reduced relative to
the C5 asphaltenes content of the crude feed”?
We answer this question in the affirmative and REVERSE.

ANALYSIS

The Examiner acknowledges that Lindsay does not disclose items 1-4
as listed above.
With regard to the claimed TAN value (item (1)) and the reduction of
the TAN value (item (3)), the Examiner states that a “typical crude is
expected to inherently contains TAN and reduction of TAN during
contacting with the catalyst”. Ans. 5. The Examiner relies upon Halbert for
teaching that a typical crude contains TAN of 1 to 8. Id. However,
Appellants rightly point out that Halbert is directed to “acidic crudes”.
Halbert, col. 2, ll. 10-11. Br. 8-9. Appellants also rightly point out that
Lindsay’s hydrocarbon-treated oil includes, broadly, all liquid and
liquid/vapor hydrocarbon mixtures. Lindsey, col. 3, ll. 44-53. Br. 8.
With regard to the claimed C5 asphaltenes content of at least 0.04
grams (item (2)), the Examiner relies upon Lindsay for disclosing crude feed
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having an asphaltene content of at least 0.213 grams per gram of crude feed
as found in Table IX of Lindsay. Ans. 4-5. However, as the Examiner
admits on page 11 of the Answer, Lindsay’s disclosure of the asphaltene
content concerns the total asphaltene content, and thus, there is no indication
of the content of C5 asphaltenes. Hence, the claimed element of “a C5
asphaltenes content of at least 0.04 grams of C5 asphaltenes per gram of
crude feed” is not disclosed. Halbert and Hensley, Jr. also do not teach this
element, and the Examiner does not rely upon them in this regard (the
Examiner relies upon Hensley for teaching item (4), and relies upon Halbert
as discussed, supra). Ans. 5-6.
The above-mentioned record leads us to agree with Appellants,
for at least the reasons set forth in their Brief, that a prima facie case
of anticipation has not been satisfied. Not only is a claimed element
missing from Lindsey, the reference must “direct those skilled in the
art to the compound without any need for picking, choosing, and
combining various disclosures not directly related to each other.” In
re Arkley, 455 F.2d 586, 587 (CCPA 1972). This is not the case in the
record before us for the reasons discussed, supra.
In view of the above, we therefore reverse Rejection 1.
With regard to Rejection 2, because Halbert and Hensley, Jr. do
not cure the deficiencies of Lindsay, we also agree with Appellants’
position for at least the reasons set forth in the Brief on pages 13-15,
and reverse Rejection 2.

CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.
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Application 11/014,365

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REVERSED

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