Ex Parte Guo

Board of Patent Appeals and Interferences

Nov 25, 2009

10957457 (B.P.A.I. Nov. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHANG-JIE GUO
____________

Appeal 2008-005369
Application 10/957,457
Technology Center 1700
____________

Decided: November 25, 2009
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Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 (Appeal Brief filed March 12, 2008, hereinafter “Br.,” at 5;
Final Office Action mailed June 11, 2007, hereinafter “FOA”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
Appellant’s claimed invention relates to a process for integrating a
refinery hydroprocessing unit with a syngas stream, a hydrocarbon synthesis
unit (also known as a GTL, i.e., gas to liquid, unit), and a utilities generation
unit (Specification, hereinafter “Spec.,” 2, l. 24 and 5, ll. 22-25). According
to Appellant, the claimed process “satisfies the need to increase refining
hydroprocessing unit H2 [i.e., H2] purity, to maximize the desirable and
environmentally acceptable product produced from pet coke, refinery
residuals, and/or coal while extracting a maximum amount of residual value
(such as heat value) from the unreacted components of the feedstock” (id. at
5, ll. 17-22).
Claims 1 and 8 read as follows:
1. A process for integrating a refinery
hydroprocessing unit, with a syngas stream, a hydrocarbon
synthesis unit, and a utilities generation unit, the process
comprising the steps of:
(a) supplying a raw syngas comprising H2,
(b) providing an integrated hydrocarbon processing
system comprising:
(i) a hydrocarbon synthesis unit,
(ii) a petroleum refinery hydroprocessing unit,
which is operable to produce at least a refinery
product and a refinery purge gas,
(iii) an acid gas removal unit,
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(iv) a utilities generation facility,
(v) a syngas membrane separator, and
(vi) a PSA unit,
(c) forming a desulfurized syngas by stripping
contaminants from said raw syngas and said refinery
purge gas in said acid gas removal unit,
(d) separating in said syngas membrane separator a first
portion of desulfurized syngas to form an H2-
enriched permeate stream and an H2-lean retentate
stream,
(e) forming an H2-enriched syngas by combining a
second portion of desulfurized syngas and a first
portion of said H2-enriched permeate stream,
wherein said H2-enriched syngas is formed with an
effective H2/CO ratio for the production of synthetic
hydrocarbon products,
(f) producing a synthetic hydrocarbon product by feeding
said H2-enriched syngas to said hydrocarbon
synthesis unit,
(g) charging a second portion of said H2-enriched
permeate stream to said PSA unit,
(h) obtaining a substantially pure H2 stream from said
PSA unit,
(i) producing a combustible tail gas from said PSA unit,
(j) supplying said substantially pure H2 stream to said
petroleum refinery hydroprocessing unit, and
(k) feeding said combustible tail gas together with said
H2-lean retentate stream to said utilities generation
unit, so as to produce useful power and steam
therefrom.

8. A process for integrating a refinery
hydroprocessing unit, with a syngas stream, a hydrocarbon
synthesis unit, and a utilities generation unit, the process
comprising the steps of:
(a) supplying a raw syngas comprising H2,
(b) providing an integrated hydrocarbon processing
system comprising:
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(i) a hydrocarbon synthesis unit,
(ii) a petroleum refinery hydroprocessing unit,
which is operable to produce at least a refinery
product and a refinery purge gas,
(iii) an acid gas removal unit,
(iv) a utilities generation facility,
(v) a syngas membrane separator,
(vi) a PSA unit,
(vii) a refinery acid gas removal unit, and
(viii) a supplemental membrane separator,
(c) forming a desulfurized syngas by stripping
contaminants from said raw syngas in said acid gas
removal unit,
(d) separating in said syngas membrane separator a first
portion of desulfurized syngas to form an H2-
enriched permeate stream and an H2-lean retentate
stream,
(e) charging said H2-enriched permeate stream to said
PSA unit,
(f) obtaining a substantially pure H2 stream from said
PSA unit,
(g) producing a combustible tail gas from said PSA unit,
(h) supplying said substantially pure H2 stream to said
petroleum refinery hydroprocessing unit,
(i) forming a desulfurized refinery purge gas by stripping
contaminants from said refinery purge gas in said
refinery acid gas removal unit,
(j) separating a supplemental H2-enriched permeate
stream and a supplemental H2-lean retentate stream
from said desulfurized refinery purge gas in said
supplemental membrane separator,
(k) forming a combined H2-enriched syngas feed with an
effective H2/CO ratio for the production of synthetic
hydrocarbon products by adding said supplemental
H2-enriched permeate stream to said second portion
of desulfurized syngas,
(l) producing a synthetic hydrocarbon product by feeding
said H2-enriched syngas to said hydrocarbon
synthesis unit, and
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(m) feeding said combustible tail gas together with said
H2-lean retentate stream and said supplemental H2-
lean retentate stream to said utilities generation unit,
so as to produce useful power and steam therefrom.
(Br. 17-20; Claims App’x.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed April 17, 2008, hereinafter
“Ans.,” 2):
Jahnke US 6,596,780 B2 July 22, 2003
Wallace US 2003/0041518 A1 Mar. 6, 2003
Claims 1-10 of Application 11/255,461.

The Examiner rejected claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Jahnke and Wallace (Ans. 3-9).
The Examiner also provisionally rejected claims 1-10 under the
judicially created doctrine of obviousness-type double patenting over claims
1-10 of Application 11/255,461 (Ans. 9-10), which, according to United
States Patent and Trademark Office records, has been abandoned with no
filing of a continuation application.

ISSUES
35 U.S.C. § 103: Claims 1-7
With respect to independent claim 1 (from which claims 2-7 depend),
the Examiner asserted that Jahnke discloses every limitation except for step
(b)(ii) (providing “a petroleum refinery hydroprocessing unit, which is
operable to produce at least a refinery product and a refinery purge gas”)
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(Ans. 3-5). According to the Examiner, Jahnke describes the limitations
recited in steps (d), (e), and (g) of claim 1 at column 7, lines 51-58, column
7, lines 8-12, and column 7, lines 51-53, respectively (Ans. 3-4).
Appellant, on the other hand, contends that the Examiner erred
because Jahnke “does not suggest combining desulfurized syngas with a
portion of the H2 enriched permeate stream and then sending the thus-H2
enriched syngas to a FT [i.e., Fischer-Tropsch] reactor” but instead discloses
that “the H2 enriched permeate stream [from the membrane separator] is
first sent to the PSA system . . .” (Br. 12; claim 1, steps (d), (e), and (g)).
Thus, a dispositive issue arising from the contentions of the Examiner
and Appellant is:
Has Appellant shown reversible error in the Examiner’s finding that
Jahnke discloses steps (d), (e), and (g) recited in claim 1?

35 U.S.C. § 103(a): Claims 8-10
Appellant has not offered any reasonably specific arguments based on
any particular limitation recited in claims 8-10.
Accordingly, we summarily affirm the Examiner’s Section 103(a)
rejection of claims 8-10.

Provisional Obviousness-Type Double Patenting
Application 11/255,461, the claims of which served as the basis of the
Examiner’s provisional rejection under the judicially created doctrine of
obviousness-type double patenting, was abandoned September 22, 2009 and
no continuing application has been filed.
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Accordingly, the appeal of the provisional double patenting rejection
is dismissed as moot.

FINDINGS OF FACT (“FF”)
1. Appellant’s Figure 1 is reproduced below:

Figure 1 depicts a process wherein desulfurized syngas 14 is
split into a first portion 16 and a second portion 18 and then the
first portion 16 of the desulfurized syngas is fed into a
membrane separator 60 to form an H2-enriched permeate
stream 62, which is also split into first and second portions (66,
68), the first portion 66 being combined with second portion 18
of the desulfurized syngas to form an H2-enriched syngas 19,
and the second portion 68 being fed to a PSA unit 50 (Spec. 11,
l. 20 to 12, l. 3).
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2. Appellant’s Specification describes that “[a] portion of the
desulfurized syngas is fed to a syngas membrane separator to
form an H2-enriched permeate stream . . .” (Spec. 6, ll. 11-13).
3. The Specification discloses that “[t]he PSA unit 50 separates
the hydrogen from the second portion of H2-enriched permeate
stream 68 to create a substantially pure H2 stream 52 . . .”
(Spec. 14, ll. 7-9).
4. Jahnke’s Figure 4 is reproduced below:

Figure 4 depicts a “preferred embodiment of [Jahnke’s]
invention” wherein desulfurized syngas is supplied to a
membrane separator 130 and a substantially pure hydrogen
stream 133 from the hydrogen membrane separator 130 is fed
to a PSA unit 134 where a pure hydrogen stream is produced,
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which is then optionally fed via line 136a to a Fischer-Tropsch
(FT) reactor 138 (col. 12, ll. 20-25).
5. Jahnke discloses:
The hydrogen-rich membrane permeate is usually
at a lower pressure, is thus compressed to a higher
pressure, and is purified by the PSA system, using
of a pressure change on the adsorbent beds, to
yield a hydrogen product up to 99.999% purity.
Waste streams from the membrane and PSA units
often are used as fuel, and in the instant invention
can be integrated into the steam side of the IGCC
process to generate steam for power production or
export . . . . [col. 7, ll. 51-58].
6. Jahnke further discloses:
The use of the shift reaction to obtain proper
H2/CO is one method to adjust the ratio. Other
methods are useful as well, such as importing H2
into the syngas or mixing the syngas with a higher
H2 /CO gas stream from, for example, steam
methane reforming of natural gas [col. 7, ll. 8-12].

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).
“All words in a claim must be considered in judging the patentability
of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970).
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ANALYSIS
35 U.S.C. § 103(a): Claims 1-7
We agree with Appellant that the Examiner’s rejection is not well-
founded. Specifically, step (e) of claim 1 recites “combining a second
portion of desulfurized syngas and a first portion of said H2-enriched
permeate stream” (italics added). Read in context with steps (d) and (g),
claim 1 requires splitting both (i) the desulfurized syngas into first and
second portions and (ii) the the H2-enriched permeate stream into first and
second portions, such that the second portion of desulfurized syngas is
combined with a first portion of H2-enriched permeate stream (FF 1-3). The
Examiner has not adequately explained how the relied upon portions of
Jahnke discloses or otherwise would have suggested the subject matter
defined by these limitations (FF 4-6) Indeed, Jahnke’s Figure 4 shows that
all of the desulfurized syngas is supplied to the membrane separator 133 and
all of the H2-enriched permeate stream from the membrane separator 133 is
fed to a PSA unit 134 (FF 4).
Because the Examiner has not accounted for steps (d), (e), and (g) of
claim 1, we cannot uphold the Examiner’s rejection of claims 1-7. See
Wilson, 424 F.2d at 1385.

CONCLUSION
Appellant has shown reversible error in the Examiner’s finding that
Jahnke discloses steps (d), (e), and (g) of claim 1.
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Appellant has not shown reversible error in the Examiner’s conclusion
that claims 8-10 would have been obvious to one of ordinary skill in the art
over Jahnke and Wallace.

DECISION
The Examiner’s decision to reject claims 1-10 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Jahnke and Wallace
is reversed as to claims 1-7 but affirmed as to claims 8-10.
The appeal of the Examiner’s provisional rejection of claims 1-10
under the judicially created doctrine of obviousness-type double patenting is
dismissed as moot.
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

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