Ex Parte Cullen

Board of Patent Appeals and Interferences

Jul 27, 2010

11371567 (B.P.A.I. Jul. 27, 2010)

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.
11/371,567 03/09/2006 Mark Cullen CULLN-001C 5176
7663 7590 07/27/2010
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
NGUYEN, TAM M
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
07/27/2010 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 MARK CULLEN
____________

Appeal 2010-000112
Application 11/371,567
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 50-65. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000112
Application 11/371,567

Appellant claims a process for removing organic sulfur from a crude
oil fraction (claim 50, 56, 61). The process comprises exposing crude oil to
sonic energy, for example, in the absence of any added hydrogen peroxide or
hydroperoxides and contacting the exposed crude oil fraction with hydrogen
gas to convert organic sulfur in the crude oil to hydrogen sulfide by
hydrodesulfurization (claim 50). According to Appellant’s Specification,
exposing the crude oil to sonic energy oxidizes the sulfur (Spec. para.
[0039]) and the resulting oxidized sulfur-containing species are then treated
pursuant to conventional hydrodesulfurization processes (Spec. para.
[0043]).
Representative claims 50 and 61 read as follows:
50. A process for removing organic sulfur from a crude oil fraction,
said process comprising:

(a) exposing crude oil to sonic energy in the absence of any added
hydrogen peroxide or hydroperoxides, also in the absence of a metallic
catalyst, and deriving a crude oil fraction; and

(b) contacting said crude oil fraction derived in step (a) with hydrogen
gas under conditions causing conversion of said organic sulfur originally
present in said crude oil to hydrogen sulfide by hydrodesulfurization.

61. A process for removing organic sulfur from a crude oil fraction,
said process comprising:

(a) exposing the crude oil fraction to sonic energy in the absence of
a surface active agent; and

(b) contacting said crude oil fraction exposed to sonic energy in
step (a) with hydrogen gas under conditions causing conversion of said
organic sulfur originally present in said crude oil fraction to hydrogen
sulfide by hydrodesulfurization.

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Application 11/371,567

Appellant requests review of the rejections set forth below (App. Br.
9).
The § 112, First Paragraph, Written Description, Rejection of Claims 50-60
The Examiner rejects claims 50-60 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 3). The Examiner states that “[t]he limitation ‘in the absence of any
added hydrogen peroxide or hydroperoxides’ in line[s] 3-4 of claim 50 was
not described in the specification at the time the invention was filed” (id.;
underlining deleted). The Examiner clarifies that “[t]he present specification
may support that the process is operated without hydroperoxide, but does not
support that the process is operated with [sic, without] any added hydrogen
peroxide” (id. at 6). According to the Examiner, hydroperoxide and
hydrogen peroxide are two different compounds (id.).
Appellant argues that hydroperoxide and hydrogen peroxide are not
two different compounds according to the Specification disclosure (Reply
Br. para. bridging 5-6). Appellant’s explanation for this argument follows:
Paragraph [0030] [sic, [0028]] of Appellant's specification
explicitly states that "the term 'hydroperoxide' is used herein
to denote a compound of the molecular structure R-0-0-H in
which R represents either a hydrogen atom or an organic or
inorganic group" and that "preferred hydroperoxides are
hydrogen peroxide (in which R is a hydrogen atom). . .".
Thus, the specification as originally filed clearly provides
adequate written description for a process performed in the
absence of any added hydroperoxides, including hydrogen
peroxide.

(id.).
The Examiner offers no rebuttal to this argument. On the record
before us, therefore, Appellant’s argument is unrebutted and persuasive. It
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Application 11/371,567

follows that the record does not support the Examiner’s position that the
claim 50 limitation under consideration fails to comply with the written
description requirement. In addition, we point out that rejected claims 56-60
do not contain this limitation. The rejection of these claims appears to have
been an inadvertent oversight on the Examiner’s part.
For the above-stated reasons, we will not sustain the Examiner’s
§ 112, first paragraph, rejection of claims 50-60.
The Provisional Double Patenting Rejection of Claim 61
The Examiner provisionally rejects claim 61 on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claim 1 of co-pending Application No. 10/411,796 (Ans. 3). The Examiner
acknowledges that claim 1 of the co-pending application treats fossil fuel
rather than a crude oil fraction as required by claim 61 but concludes that it
would have been obvious to treat a crude oil fraction according to the claim
1 process “because one of skill in the art would [have] used any hydrocarbon
fossil fuel including crude oil and it would be expected that a crude oil
fraction would [have been] successfully treated in the copending claimed
process” (id. at para. bridging 3-4).
Appellant argues without embellishment that claim 1 of the co-
pending application “does not teach or suggest that a crude oil fraction in
particular is treated, and instead merely recites a fossil fuel” (App. Br. 13).
This unembellished argument fails to address with any reasonable
specificity the rationale articulated by the Examiner in support of an
obviousness conclusion. Viewed in this light, the argument is little more
than an unsupported assertion. It follows that we perceive no convincing
merit in Appellant’s argument.
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Appeal 2010-000112
Application 11/371,567

As a consequence, we sustain the Examiner’s provisional double
patenting rejection of claim 61.
The Double Patenting Rejection of claims 50-65
The Examiner rejects claim 50-65 on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1-5 of
U.S. Patent No. 7,081,196 (Ans. 4). The Examiner indicates that patent
claim 1 is generic to the rejected claims such that the former encompasses
the limitations of the latter (id.).
Appellant argues that
the instant claims are not considered to be obvious over the
cited claims because, as noted by the Examiner, the patented
claims do not recite that the process is performed either “in
the absence of a metallic catalyst” or “in the absence of
hydrogen peroxide or hydroperoxides.” (required elements of
the present claim 50)

(App. Br. para. bridging 14-15).
This argument also fails to address the Examiner’s rationale for the
rejection. Moreover, the argument is directed solely to independent claim 50
limitations which are not present in rejected claims 56-65. For these
reasons, Appellant’s argument fails to reveal any error by the Examiner in
making the rejection under review.
We sustain, therefore, the Examiner’s double patenting rejection of
claims 50-65.
The § 103 Rejection of Claims 50-65
The Examiner rejects claims 50-65 under 35 U.S.C. § 103(a) as being
unpatentable over Sorgenti (US 3,816,301, issued June 11, 1974) in view of
Yen (US 6,402,939 B1, issued Jun. 11, 2002). The Examiner finds that
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Appeal 2010-000112
Application 11/371,567

Sorgenti discloses a process for reducing sulfur content of a hydrocarbon
feed by oxidizing sulfur compounds in the feed followed by
hydrodesulfurization (Ans. 4). The Examiner acknowledges that Sorgenti
does not disclose exposing the hydrocarbon feed to sonic energy in the
oxidation step but finds that Yen discloses such a technique for removing
sulfur compounds from a hydrocarbon feed (id. at 5). The Examiner
concludes that it would have been obvious “to have modified the process of
Sorgenti by applying ultrasound in the oxidation step because Yen discloses
that ultrasound would increase the reactivity of the sulfur bearing
compounds in the mixture” (id.).
Appellant argues without embellishment that certain features recited
in the independent claims “are not taught or suggested by Sorgenti or Yen”
(App. Br. 18). Because this unembellished argument reveals no error in the
Examiner’s obviousness conclusion, the record before us evinces that the
Examiner has established a prima facie case of obviousness.
In an attempt to refute this prima facie case, Appellant proffers the
Cullen Declaration executed March 14, 2008, which was filed under 37
C.F.R. § 1.132 in related Application No. 10/429,369 (App. Br. 18-22).
Appellant argues that the Examiner has not properly considered this
Declaration evidence because “the Examiner has not compared the results
presented by Appellant to the closest prior art reference” (id. at para.
bridging 19-20).
This argument is unpersuasive because it is premised on an incorrect
assignment of burden. It is the burden of Appellant, not the Examiner, to
establish unexpected results by comparing the claimed invention to the
closest prior art. See In re Burckel, 592 F.2d 1175, 1179-80 (CCPA 1979);
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Appeal 2010-000112
Application 11/371,567

In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the record before us,
Appellant has failed to carry this burden. This failure is due to the fact that
the Cullen Declaration compares results obtained from Appellant’s process
to unidentified prior art processes rather than to the closest prior art such as
Sorgenti or Yen.2
Appellant further argues that the Cullen Declaration shows that
Appellant’s method is capable of providing 97% reductions in sulfur levels
and that the Sorgenti and Yen references do not teach or suggest such results
(App. Br. 20).
As correctly indicated by the Examiner, however, Yen’s ultrasound
technique is taught to result in a sulfur content of 13 ppm (i.e., 0.0013%) to
thereby yield a final reduction of 93.2% (Ans. 8-9; Yen, col. 14, ll. 6-8).
This teaching supports the Examiner’s determination that the applied
references, particularly Yen, would have suggested the sulfur reductions
achieved by Appellant’s method (Ans. 9). Significantly, Appellant has not
responded to the Examiner’s rebuttal of the above-noted argument (see
Reply Br. 7-8).
These circumstances lead us to find no convincing merit in
Appellant’s argument that Sorgenti and Yen would not have suggested the
sulfur level reductions achieved by Appellant’s method. That is, the record
of this appeal reflects that Appellant’s sulfur level reductions would have
been expected rather than unexpected in light of the applied reference
teachings.

2 The above-noted deficiencies of Appellant’s argument and the Cullen
Declaration were previously revealed to Appellant in a Decision dated
February 26, 2010 on Appeal No. 2009-014990 for the previously
mentioned related Application No. 10/429,369 (Dec. 6).
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Appeal 2010-000112
Application 11/371,567

Finally, we observe that the Examiner has criticized Appellant’s
Declaration evidence as not commensurate in scope with the appealed
claims (Ans. 9). Again, it is significant that Appellant has not responded to
the Examiner’s criticism (see Reply Br. 7-8). This is because a showing of
unexpected results sufficient to overcome a prima facie case of obviousness
must be commensurate in scope with the affected claims. In re Peterson,
315 F.3d 1325, 1330-31 (Fed. Cir. 2003). It follows that the Examiner’s
unrebutted criticism establishes another reason why Appellant’s declaration
evidence is inadequate to overcome the Examiner’s prima facie case of
obviousness.
For the above-stated reasons, the argument and evidence of record
weigh most heavily in favor of an obviousness conclusion regarding the
independent claims as well as the dependent claims on appeal which
Appellant has not separately argued (App. Br. 22). Accordingly, we sustain
the § 103 rejection of claims 50-65 as being unpatentable over Sorgenti in
view of Yen.
Conclusion
The decision of the Examiner 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(a) (2008).
AFFIRMED

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Appeal 2010-000112
Application 11/371,567

STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
9