Ex Parte Bhan et alDownload PDFPatent Trial and Appeal BoardSep 25, 201311013632 (P.T.A.B. Sep. 25, 2013) Copy Citation 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. 11/013,632 12/16/2004 Opinder Kishan Bhan TH2825 (US) 4742 23632 7590 09/26/2013 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER SINGH, PREM C ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 09/26/2013 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 ____________________ PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte Shell Oil Company (Inventors: Opinder Kishan Bhan and Scott Lee Wellington) ____________________ Appeal 2012-007542 Application 11/013,632 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, TERRY J. OWENS, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. SCHAFER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007542 Application 11/013,632 2 Shell Oil Company (Applicant) appeals from an Examiner’s decision rejecting claims 1-6. 35 U.S.C. §§ 6(b) and 134(a). We reverse. Exemplary Claim Exemplary claim 1 reads as follows: 1. A crude composition, having, per gram of crude composition: 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; and at least 0.3 grams of residue, as determined by ASTM Method D5307. Rejections The Examiner maintained the following rejections in the Answer: Claims 1-6 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Bridges1 evidenced by Gong.2 Analysis The Examiner relies upon Feed K described in Bridges’ Example 6. Bridges, 15:32 – 16:65. The Examiner finds that Feed K has, per gram, a sulfur content of .0005 grams, and a residue content of about 0.29 grams. The Examiner also found that the oxygen content of “at most 0.004 grams” is inherent in the Feed K composition. The Examiner rests this finding principally on Bridges’ and Applicant’s use of Venezuelan crude oil. Answer 5-6 (citing to Bridges 15:34-35 and Applicant’s written description 46:37-38).3 Applicant argues that the Examiner’s reasoning is speculative: 1 U.S. Patent 6,303,842 B2 (2001). 2 U.S. Patent Application Publication 2002/0148754 A1 (2002). 3 The Answer referred to lines 30-31 of the written description. The correct citation is to lines 37-38. Appeal 2012-007542 Application 11/013,632 3 Bridges does not state that the Venezuelan crude feed (Feed I) is a Hamaca or a Morichal crude, so the oxygen content of Feed I cannot be presumed to be the same as the Hamaca or Morichal crude and the oxygen content of Feed K cannot be presumed on the basis of processing a Hamaca or Morichal crude. Furthermore, even if Feed I were a Hamaca or a Morichal crude, Feed K would not necessarily have an oxygen content of at most 0.4 wt.%. For example, if the process of Bridges reduced the oxygen content of the Hamaca crude by 53 wt. % than [sic, then] Feed K would have an oxygen content of 0.6 wt.%. Similarly, if the process of Bridges reduced the oxygen content of the Morichal crude by 53 wt. % then Feed K would have an oxygen content of 0.5 wt. %. As such, the Feed K product produced by the process of Example 6 would not necessarily have an oxygen content of at most 0.4 wt. %, if the process of Bridges can be assumed to affect the oxygen content of the crude feed in the same manner as the process disclosed in the application text that is used to produce the claimed composition. Brief 9. The Examiner responds: [T]here is no reason why Bridges should achieve oxygen reduction by 53% as argued. Bridges reduces sulfur from 2.48 wt% to 0.05 wt% (See Table 15), a reduction of 97.9%. Assuming same order of reduction for oxygen removal, Bridges is expected to achieve oxygen content of the product K in the claimed range. Answer 13. The Examiner also points to Gong as teaching that the oxygen content of most crude is low. Answer 14 (referring to Gong ¶ 0003). As noted by Applicant, Gong does not define what is meant by “low.” Brief 10. Having reviewed the evidence and arguments, the Examiner has failed to establish by a preponderance of the evidence that the Feed K oil of Bridges Example 6 would necessarily have an oxygen content of no more than .0004 gram per gram of oil. The Examiner has not directed us to evidence or provided argument establishing that one skilled in the art could reasonably predict the Appeal 2012-007542 Application 11/013,632 4 oxygen content from the other parameters of the Feed K oil. Nor has the Examiner established that the properties and characteristics of the Feed K oil are sufficiently similar to those of the claimed oil as to require Applicant to show that the Feed K oil does not meet the oxygen limitation. With respect to the alternative rejection based upon § 103(a), the Examiner concludes that: [I]t would have been obvious to one with ordinary skill in the art at the time of invention to characterize the product of Bridges in terms of the oxygen content of the crude product. Answer 6. The Examiner appears to be arguing that if someone skilled in the art measured, i.e. “characterized,” the oxygen content of the Feed K oil, it would meet the claim limitations. This is simply an alternative statement of the Examiner’s inherency position rather than an explanation why any differences between the Feed K oil and the claimed oils would have been obvious. DECISION The Examiner’s rejection of Claims 1-6 under 35 U.S.C. § 102(b) and alternative rejection under § 103(a) are reversed. REVERSED tc Copy with citationCopy as parenthetical citation