Ex Parte Cullen

Board of Patent Appeals and Interferences

Sep 15, 2009

10644255 (B.P.A.I. Sep. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK CULLEN
____________

Appeal 2008-006125
Application 10/644,255
Technology Center 1700
____________

Decided: September 15, 2009
____________

Before PETER F. KRATZ, JEFFERY T. SMITH and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 40-88 in the second non-final Office Action dated
September 8, 2006 (App. Br. 1). This Board has jurisdiction under 35
U.S.C. § 6(b).
Appeal 2008-006125
Application 10/644,255

2
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
The invention of the present application under review is directed to a
method or process of treatment of crude oil fractions and fossil fuels. Claim
40 is illustrative and reproduced below:
40. A process for upgrading a crude oil fraction
to improve the performance and enhance the utility
of the crude oil fraction, said process comprising
the step of heating said crude oil fraction in the
presence of an oxidizing agent while exposing said
crude oil fraction to sonic energy in the absence of
an aqueous phase.
The Examiner relies on the following prior art as evidence of
unpatentability of the claims under review:
Inoue 3,616,375 Oct. 26, 1971
Gunnerman 6,500,219 Dec. 31, 2002

The Examiner maintains the following rejections of the pending
claims:
1. Claims 40-57 stand rejected under 35 U.S.C. § 103(a) as
obvious over Gunnerman.
2. Claims 58-75 stand rejected under 35 U.S.C. § 103(a) as
obvious over Gunnerman.
3. Claims 76-881 stand rejected under 35 U.S.C. § 103(a) as
obvious over Gunnerman.

1 The Examiner’s rejection states that claims 78-88 are rejected (Ans. 5).
Appellant contends the Examiner meant the third rejection to apply to claims
76-88, rather than 78-88 (App. Br. 28). As claim 76 is the sole independent
Appeal 2008-006125
Application 10/644,255

3
4. Claims 76 and 83-88 stand rejected under 35 U.S.C. § 103(a) as
obvious over Inoue.
5. Claims 77-81 stand rejected under 35 U.S.C. § 103(a) as
obvious over Inoue in view of Gunnerman.
6. Claim 82 stands rejected under 35 U.S.C. § 103(a) as obvious
over Inoue alone or in view of Gunnerman.
Regarding rejections (1) to (3), we address Appellant’s arguments
with respect to independent claims 40, 58, and 76 for reasons that will
become evident below.
Regarding rejection (4), Appellant argues separately for independent
claim 76 (App. Br. 32-35). Appellant asserts claims 83-88 are allowable
based on their dependency on claim 76 (App. Br. 35). Therefore, we treat
claims 76 and 83-88 as a group to stand or fall together, with claim 76 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
Regarding rejections (5) and (6), Appellant argues for the allowability
of claims 77-81, and 82, respectively, based on their dependency on claim
76, as well as collectively arguing for the allowability of the additional
limitations in these claims (App. Br. 35-38). Accordingly, dependent claims
77-81, and 82 are treated with regard to the argued features of independent
claim 76, respectively.

claim of this group, the rejection only makes sense if this claim is included.
Therefore, we determine that the Examiner’s omission of claims 76 and 77 is
harmless error and address the third rejection as applied to claims 76-88.

Appeal 2008-006125
Application 10/644,255

4
Gunnerman Rejections (1) to (3)
ISSUE
Has Appellant shown the Examiner reversibly erred in concluding that
the omission of the aqueous phase (claim 40), omission of the suface active
agent (claim 58), or the omission of the oxidizing agent (claim 76) would
have been obvious over Gunnerman? We decide this issue in the
affirmative.

FINDINGS OF FACT
1. Gunnerman discloses a method of removing organic sulfur
compounds from a petroleum-based fuel by a continuous
process that applies ultrasound to a multiphase reaction medium
that contains the fuel, an aqueous fluid, a hydroperoxide
oxidizing agent and a surface active agent. The reaction
medium spontaneously separates into organic and aqueous
phases after ultrasonic treatment (col. 2, ll. 27-35).
2. Gunnerman states that it is believed that the sulfides in the fuel
are converted by the oxidation process to the corresponding
sulfones, which have greater solubility in the aqueous phase
and therefore are more readily removable by the separation of
the phases (col. 3, ll. 1-5).
3. Gunnerman states that the process can produce improved fuels.
The process may increase the ignition performance, the cetane
number and the API gravity of fuels, such as diesel fuels (col. 3,
l. 58 – col. 4, l. 10). Gunnerman does not explain or
Appeal 2008-006125
Application 10/644,255

5
hypothesize on the means by which these improvements occur,
or the function of the aqueous fluid, surface active agent
oxidizing agent or the subsequent phase separation in achieving
these other improvements.
4. Gunnerman teaches the surface active agent may be any that
promotes the formation of an emulsion between the aqueous
and fuel fluids upon passing through a mixing pump and that
will spontaneously separate the product liquid into organic and
aqueous phases suitable for separation by a decanter (col. 4, ll.
61-67). Gunnerman discloses that the surface active agent is
chosen to effect spontaneous separation of the emulsion into
aqueous and organic phases upon exiting from the ultrasound
chamber (col. 8, ll. 1-14).

PRINCIPLES OF LAW
In patentability context, claims are to be given their broadest
reasonable interpretation. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993).
“It can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
A modification to the prior art which renders it inoperable for its
intended purpose effectively teaches away from the modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

Appeal 2008-006125
Application 10/644,255

6
ANALYSIS
Appellant contends removal of the aqueous phase, surface active
agent, or oxidizing agent from Gunnerman would not have been obvious
because the aqueous phase, surface active agent and oxidizing agent are
necessary for the intended function of removing the sulfur products, and the
prior art relied on evinces that implementing any of these omissions would
render the method unsuitable for its intended purpose (i.e., separating sulfur
from fuel via an oxidation reaction with an aqueous phase emulsion) (App.
Br. 21-22, 25, 31).
Gunnerman teaches a method of removing or extracting sulfur
compounds from a petroleum-derived fuel by mixing the fuel with water, a
surface-active agent and an oxidizing agent, to form an emulsion. The
emulsion is then placed in a vessel and sonic energy is applied to the
emulsion (FF 1). During application of the sonic energy, the sulfur
contaminants in the fuel are oxidized to what are believed to be more water-
soluble compounds, which move into the aqueous phase of the emulsion (FF
2). The oxidized sulfur compounds are removed from the fuel when the
organic and aqueous phases are separated.
The Examiner found the difference between Gunnerman and the
invention of claims 40, 58, and 76 was that Gunnerman did not teach a
process with the absence of an aqueous phase, surface active agent, or an
oxidizing agent (Ans. 3-5). The Examiner then concluded, if the function of
the aqueous phase, surface active agent, or oxidizing agent was undesired,
its omission would have been obvious, citing Ex Parte Wu, 10 USPQ2d
2031, 2032 (BPAI 1989), In re Larson, 340 F.2d 965, 969 (CCPA 1965) and
In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (Id.).
Appeal 2008-006125
Application 10/644,255

7
The Examiner contends the separation would still occur even without
an aqueous phase, surface active agent, or oxidizing agent, but not as easily
or readily as would occur with a mixture having such components (Ans. 7-
9). The Examiner concludes the aqueous phase, surface active agent, or
oxidizing agent is only to improve the effectiveness and efficiency of the
process (Id).
We do not find the Examiner’s reasoning persuasive. In maintaining a
rejection under §103, some reason should be articulated for why a skilled
artisan would have found the suggested difference from the prior art
obvious. KSR, 550 U.S. at 418. We cannot determine any reason why one
skilled in the art would have omitted the aqueous phase, surface active
agent, or oxidizing agent from Gunnerman’s process.
Throughout Gunnerman, the process is described as involving a
multiphase, organic/aqueous emulsion which is subsequently separated or
allowed to separate, the undesired contaminants being extracted by the
aqueous phase (FF 1, 2). The Examiner asserts the separation would still
occur without the aqueous phase (Ans. 7), but this statement makes no sense
based on Gunnerman’s disclosure. Rather, Gunnerman describes the
separation of the aqueous emulsion into separate organic and aqueous phases
(FF 4), and the emulsion was created by the addition of the water (aqueous
fluid), assisted by surfactant (surface active agent) to the fuel liquid (organic
phase) (Id.). If there is no aqueous fluid, then an aqueous/organic phase
emulsion could not form. Gunnerman only describes the separation of the
emulsion, which resulted from the added aqueous fluid. To assert the
aqueous phase is undesirable is merely using Appellant’s Specification in
hindsight.
Appeal 2008-006125
Application 10/644,255

8
Furthermore, Gunnerman shows the aqueous phase as the means by
which the oxidized sulfur contaminants are removed from the organic fuel
phase (FF 2). Gunnerman describes no other means by which the oxidized
contaminants may be removed. In other words, omission of the aqueous
layer would have rendered the process unsuitable for its intended purpose.
Gordon, 733 F.2d at 902.
Regarding the surface active agent, Gunnerman teaches that the
surface active agent promotes the formation of the emulsion of the organic
and aqueous phases (FF 4). Gunnerman does not teach or suggest any other
way of operating the process without the formation of the emulsion. Indeed,
Gunnerman teaches selecting the surface active agent to effect a spontaneous
separation of the aqueous and organic phases (FF 4). Accordingly, omitting
the surface active agent from Gunnerman’s process would have rendered the
process unsuitable for its intended purpose (i.e., phase separation). Gordon,
733 F.2d at 902.
Regarding the oxidizing agent, Gunnerman teaches oxidizing
undesirable sulfide compounds in the presence of an oxidizing agent and
sonic energy (FF 1). Gunnerman does not teach or suggest oxidizing or
otherwise eliminating the undesirable sulfide compounds by any other
means absent the oxidizing compound. We agree with Appellant that
omission of the oxidizing agent would render the Gunnerman process
unsuitable for its intended purpose (i.e., oxidation of sulfides). Gordon, 733
F.2d at 902.
We therefore conclude that in view of the prior art, one skilled in the
art would not have found operating the process of Gunnerman in the absence
of an aqueous phase, surface active agent, or oxidizing agent obvious.
Appeal 2008-006125
Application 10/644,255

9
Accordingly, we decide the issue affirmatively. The rejection of
claims 40-88 under §103 over Gunnerman is not sustained.

Inoue Rejections
ISSUES
1. Has Appellant shown the Examiner reversibly erred in
concluding that it would have been obvious to include a heating step
with the Inoue process as required by claim 76? We decide this issue
in the negative.
2. Has Appellant shown the Examiner reversibly erred in
concluding that operating a process comprising the step of heating
said crude oil in the absence of an oxidizing agent as required by
dependent claims 77 and 82 would have been obvious over Inoue in
view of Gunnerman? We decide this issue in the negative.

ADDITIONAL FACTUAL FINDINGS (FF)
We rely on the factual findings noted above in addition to those
indicated below.
5. Inoue discloses a method for extracting sulfur and sulfur
compounds from liquid petroleum products (col. 1, ll. 5-10).
The method uses certain high-energy (radiant or vibrational)
sources to treat the sulfur-containing liquid without substantial
heating thereof (col. 1, ll. 56-59). The high-energy sources may
include an electric spark discharge (col. 2, ll. 34-36), a laser
(col. 2, ll. 44-46) or sonic or shock generators (col. 2, ll. 56-58).
Appeal 2008-006125
Application 10/644,255

10
6. Inoue states that, regarding processes to reduce the sulfur
content of crude and fuel oils, thermal treatments are expensive
and may modify the composition of the oil if carried out
extensively. It had not been economically feasible to treat oil
previously in large volumes (col. 1, ll. 32-38).
7. Inoue states “in spite of use of high energy discharge, it has
been found to be possible to keep the heating of the liquid at a
minimum so that the reaction effectively takes place at ambient
temperature” (col. 2, ll. 31-33).

PRINCIPLES OF LAW
We rely on the same principles set-forth above as well as the
following case law.
A reference that teaches away cannot serve to create a prima facie
case of obviousness. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A
reference may be said to teach away “when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” Id. “The degree of teaching away will of
course depend on the particular facts; in general, a reference will teach away
if it suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant.”
Id.

Appeal 2008-006125
Application 10/644,255

11

ANALYSIS
Issue (1): Heating Step
The Examiner found Inoue does not disclose that the feed is heated
while exposing the crude oil fraction to sonic energy. But, the Examiner
concluded it would have been obvious to modify the process by heating the
crude oil a couple of degrees because one would expect the results would be
the same or similar when operating the process at ambient temperature or
slightly higher (Ans. 5).
Appellant contends Inoue does not teach heating the feed, but merely
describes a method of exposing petroleum liquids to high-energy sources
without substantially heating the liquids (App. Br. 33 [emphasis in
original]). Appellant further contends Inoue teaches away from heating,
when its states “thermal treatments are expensive and may, if carried out
extensively, severely modify the composition of the oil.” (App. Br. 34, see
FF 6).
In construing a claim, we are required to give the terms of the claims
their broadest reasonable interpretation. Van Geuns, 988 F.2d at 1184. The
relevant portion of claim 76 reads “comprising the step of heating said crude
oil fraction.” It is not limited to any minimal amount of heating. Therefore
any amount of heating, including Inoue’s insubstantial heating caused by the
high energy discharge sources (see FF 7), would be encompassed by the
claim.
We further disagree that Inoue teaches away from heating. It only
teaches that thermal treatment may be expensive (FF 6). Inoue does not
Appeal 2008-006125
Application 10/644,255

12
discourage minimal heating that would be included in the claim as noted
above. Indeed, Inoue discloses minimal or insubstantial heating (FF 7).
Accordingly, we decide the first issue negatively, and the § 103
rejection of claims 76 and 83-88 over Inoue is sustained.

Issue (2)
Appellant contends Inoue together with Gunnerman does not teach the
features of heating said crude oil fraction in the absence of an oxidizing
agent (App. Br. 35-40).
However, Appellant’s argument does not address the Examiner’s
stated rejection that combined Gunnerman’s petroleum feedstock and
processing residence times with Inoue’s process of treating petroleum feed
using high energy sources (Ans. 6). The Examiner’s rejection relies on
Gunnerman for the feedstock and residence times only, which plainly
indicates that the Examiner relies on Inoue, the primary reference, to teach
heating without an oxidizing agent. In other words, Appellants have not
shown reversible error in the Examiner’s finding that Inoue teaches the
disputed features. Thus, the Examiner’s combination of Gunnerman with
Inoue for establishing the obviousness of employing a workable residence
time and/or particular petroleum feedstock, consonant with Appellant’s
claimed requirements, in Inoue’s process has not been confronted, much
more shown to represent reversible error, by Appellant’s arguments.
Accordingly, we answer the first and second issues negatively, and the
rejections of claims 77-82 over Inoue in view of Gunnerman are sustained.
Appeal 2008-006125
Application 10/644,255

13
DECISION
The rejections of claims 40-88 under §103(a) over Gunnerman, alone,
are REVERSED.
The rejection of claims 76, and 83-88 under §103(a) over Inoue in
view of Gunnerman is AFFIRMED.
The rejection of claims 77-82 under §103(a) over Inoue in view of
Gunnerman is AFFIRMED.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

PL initial:
sld

MATTHEW A. NEWBOLES
STETINA BRUNDA
GARRED & BRUCKER
SUITE 250
75 ENTERPRISE
ALISO VIEJO, CA 92656