Ex Parte Cullen

Board of Patent Appeals and Interferences

Feb 26, 2010

10429369 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK CULLEN
____________

Appeal 2009-014990
Application 10/429,369
Technology Center 1700
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Decided: February 26, 2010
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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
rejection of claim 19. This Board has jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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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
19 is reproduced below:
19. A process for facilitating the removal of sulfur compounds from a
liquid fossil fuel comprising the steps:

a) providing a liquid fossil fuel having a sulfur content of 500 ppm or
greater;

b) combining said fossil fuel with a peracid to form an admixture and
subjecting said admixture to ultrasound; and

c) hydrotreating said liquid fossil fuel treated in step b), said
hydrotreatment occurring in a hydrotreater operative to remove sulfur from
said liquid fossil fuel to no less than 500 ppm in the absence of performing
step b), said hydrotreatment operative to remove sulfur from said liquid
fossil fuel treated in step b) to a level not exceeding 15 ppm.

The Examiner relies on the following prior art as evidence of
unpatentability of the claims under review:
Sorgenti 3,816,301 Jun. 11, 1974
Yen 6,402,939 B1 Jun. 11, 2002
Gunnerman 6,500,219 B1 Dec. 31, 2002

The Examiner rejects claim 19 under 35 U.S.C. § 103(a) over Sorgenti
in view of Gunnerman or Yen.
ISSUES
1. Has Appellant identified reversible error in the Examiner’s
determination that the combination of Sorgenti in view of Gunnerman
or Yen would have taught or suggested all the claimed features and
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that there is a reason to modify Sorgenti’s process to use ultrasound
during the oxidation step as taught by Gunnerman or Yen? We decide
this issue in the negative.
2. Has Appellant identified reversible error in the Examiner’s finding
that Appellant’s declaration evidence is not probative of non-
obviousness because it failed to compare the claimed invention with
the oxidation and hydrogenation process of the closest prior art (i.e.,
Sorgenti)? We decide this issue in the negative.

FINDINGS OF FACT
We adopt as our own, the Examiner’s findings regarding Gunnerman,
Yen, and Sorgenti on pages 3-4 of the Answer.

PRINCIPLES OF LAW
Any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed. KSR Int’l Inc. v. Teleflex Inc., 550 U.S.
398, 420 (2007).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant must compare the evidence of unexpected results to the
closest prior art. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
Appellants have the burden of explaining the data in any declaration
proffered as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d
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1621, 1624 (BPAI 1992) citing In re Payne, 606 F.2d 303 (CCPA 1979);
In re Borkowski, 505 F.2d 713 (CCPA 1974); In re Goldberg, 168 F.2d 527
(CCPA 1948).

ANALYSIS
Issue (1): Claim Features and Reason for Modifying
Appellant argues that Sorgenti, Gunnerman, and/or Yen either
considered individually or in combination fails to teach or suggest the
features of claim 19 (Br. 13).
However, such an argument fails to address specifically or identify
reversible error in the Examiner’s well-stated case that Sorgenti teaches all
of the claimed steps, except for treating an admixture of peracid and fossil
fuel (i.e., the oxidation step) with ultrasound (Ans. 3). The Examiner finds
that Gunnerman or Yen teach using ultrasound during the oxidation step to
aid in removing sulfur compounds to the levels claimed such that it would
have been obvious to modify Sorgenti’s sulfur removal process by applying
ultrasound in the oxidation step (Ans. 3-4). Appellant has not identified
where any of the claimed features are missing from the Examiner’s
combination of Sorgenti in view of Gunnerman or Yen.
Appellant further argues that Sorgenti does not recognize the
synergistic effect of using a hydrodesulfurization step after the oxidation
step and that Gunnerman and Yen teach against using such
hydrodesulfurization step (Br. 11-13).
Appellant’s arguments are unpersuasive because whether or not
Sorgenti recognized the argued synergistic effect does not change the fact
that Sorgenti plainly teaches following the oxidation step with a
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hydrodesulfurization step. In other words, Sorgenti’s process need not be
modified to include a hydrodesulfurization step after an oxidation treatment
of the fuel. Accordingly, Appellant’s argument about Sorgenti failing to
recognize a synergistic relationship between the oxidation and
hydrodesulfurization steps is not germane to whether the Sorgenti teaches a
two step sulfur removal process that includes oxidation and
hydrodesulfurization steps.
Appellant’s teaching away arguments regarding Gunnerman or Yen
are unpersuasive because they attack the references individually instead of
addressing what the teachings of Sorgenti and Gunnerman or Yen would
have suggested to one of ordinary skill in the art. Sorgenti teaches removing
sulfur using an oxidation step followed by a hydrodesulfurization step.
Gunnerman or Yen teaches using ultrasound during the oxidation step to aid
in removing sulfur the compounds.
Plainly, Gunnerman or Yen teaches modifying Sorgenti’s process to
use ultrasound during the oxidation step to aid in sulfur removal.
Gunnerman or Yen’s disclosure regarding the damage to the fuel caused by
hydrodesulfurization is made in the context of the benefit of using
ultrasound during the oxidation treatment to remove sulfur. In other words,
Gunnerman or Yen would have suggested using the ultrasound during
Sorgenti’s oxidation step to enhance sulfur removal while preventing
damage to the fuel. Appellant has not identified reversible error.

Issue (2): Unexpected Results
Appellant argues that the Examiner has not compared the evidence
presented in the Cullen declaration to the closest prior art (i.e., Sorgenti) (Br.
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14-16). Appellant contends that the Examiner has improperly compared the
Sorgenti process as modified by Gunnerman or Yen with Appellant’s
evidence in the Cullen declaration (Br. 14-15).
Appellant’s argument are unavailing because the burden is on
Appellant to provide declaration evidence that compares the claimed
invention to the closest prior art. Burckel, 592 F.2d at 1179. As noted by
the Examiner (Ans. 6), Appellant has not performed the required
comparison. Rather, the Cullen declaration merely compares fuel treated by
a “traditional HDS process (hydrodesulfurization process)” (Cullen Dec. 3).
Appellant has not satisfied the duty to explain what is meant by “traditional
HDS” process and whether it includes an oxidation step followed by the
hydrodesulfurization step. Ishizaka, 24 USPQ2d at 1624. Indeed, the
Examiner finds that the Cullen declaration fails to compare results achieved
by the claimed process with those of the oxidation and hydrodesulfurization
process of the prior art of Sorgenti (Ans. 6, ll. 8-10) (i.e., that the “traditional
hydrodesulfurization” only employs a hydrogenation step). Appellant does
not persuasively respond to the Examiner’s finding that the Cullen
declaration fails to evince the requisite comparison (Reply Br. generally).
Accordingly, Appellant’s evidence is not probative of non-obviousness for
this reason.
It follows that Appellant has not identified that the Examiner
reversibly erred.
DECISION
The Examiner’s decision is affirmed.
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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

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