Ex Parte Kiser et al

Board of Patent Appeals and Interferences

Sep 27, 2007

10443649 (B.P.A.I. Sep. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MELVIN D. KISER,
PATRICIA K. DOOLIN, and DAVID C. BOYER
____________

Appeal 2007-1943
Application 10/443,649
Technology Center 1700
____________

Decided: 27 September 2007
____________

Before FRED E. McKELVEY, Senior Administrative Patent Judge, and
TEDDY S. GRON and ADRIENE LEPIANE HANLON, Administrative
Patent Judges.

GRON, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejections of Claims 1-17 and 25-33 of Application 10/443,649, filed
May 22, 2003, all claims pending in the application. Claims 1, 2, 4, 6-12,
14, 16, 17, and 25-33 stand rejected under 35 U.S.C. § 102(b) for
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2
anticipation by, or under 35 U.S.C. § 103 for obviousness in view of,
Rostislav Didchenko, et al. (Didchenko), U.S. Patent 4,645,584, patented
February 24, 1987 (Examiner’s Answer, page 3 (Answer, p. 3)). Claims 3,
5, 13, and 15 stand finally rejected under 35 U.S.C. § 103 for obviousness in
view of Didchenko.
The final rejections of Claims 2-17 and 25-33 stand or fall with the
Examiner’s final rejections of Claims 1 and 11 under 35 U.S.C. § 102(b) or
35 U.S.C. § 103 over Didchenko. With regard to further limitations in
claims other than process Claim 1 and product-by-process Claim 11,
Appellants argue (Appellants’ Brief On Appeal, entered September 7, 2005,
page 6 (Br. 6)):
Didchenko et al. fail to suggest the claimed steps. Didchenko et
al. are deficient in teaching the key elements of Appellants’ claims.
The absence of the key elements of the claims in and of itself is
sufficient to conclude that no case of obviousness has been
established. The mere existence of those individual steps are not even
found in the prior art.

Nowhere do Didchenko et al. disclose or suggest these steps.

The Examiner cannot add to the disclosure of Didchenko what
is not there. Quite simply, Didchenko does not disclose or suggest the
PAH limitation of the claims.

The Examiner argues that because the feedstock and precursor
pitch is produced in the same manner as claimed, the characteristics of
the feedstock and precursor pitch would necessarily be the same or
similar to that which is claimed.

No basis in fact or theory exist [sic] for making such a
conclusion.

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3
With regard to Claims 3, 5, 13, and 15, Appellants state (Br., p. 8), “The
deficiencies of Didchenko et al. have been pointed out and will not be
repeated.” We note Appellants focused exclusively on Claims 1 and 11 in
their Supplemental Brief On Appeal (SBr. 2-3).
Claims 1 and 11 are reproduced below (Br. App’x):
1. A method for producing a low sulfur and low polycyclic
aromatic hydrocarbon (PAH) petroleum pitch feedstock comprising:
hydrotreating a supply of petroleum feedstock of relatively high
sulfur content fractions derived from crude oil having an initial sulfur
content of about 1 wt% or greater, and
producing a resulting, low PAH, low sulfur petroleum pitch
feedstock having a sulfur content less than 1 wt% and less than 15,000
mg/kg of PAH.

11. A low sulfur petroleum pitch feedstock produced by
severely hydrotreating a supply of petroleum feedstock of relatively
high sulfur content fractions derived from crude oil having an initial
sulfur content of about 2 wt% or greater, and
producing a resulting, low PAH, low sulfur petroleum pitch
feedstock having a sulfur content less than 1 wt% and less than 15,000
mg/kg of PAH.

Claim Interpretation
“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). “The reason is simply that during
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.” Id. “An essential purpose of patent examination is to fashion
claims that are precise, clear, correct, and unambiguous.” Id at 322, 13
USPQ2d at 1322. “Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” Id.
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4
The method for producing a low sulfur and low polycyclic aromatic
hydrocarbon (PAH) petroleum pitch feedstock defined by Claim 1, and the
method by which a low sulfur petroleum pitch feedstock of Claim 11 is
produced, differ as follows:
1. In method of Claim 1, one skilled in the art is directed to
hydrotreat a supply of petroleum feedstock derived from crude oil having an
initial sulfur content of about 1 wt% or greater; and
2. In the method by which a low sulfur petroleum pitch feedstock of
Claim 11 is produced, one skilled in the art is directed to severely hydrotreat
a supply of petroleum feedstock derived from crude oil having an initial
sulfur content of about 2 wt% or greater.
We cannot determine from our comparison of the “severe”
hydrotreatment required by Claim 11 that the full scope of methods of
producing a low sulfur, low PAH petroleum pitch feedstock encompassed by
Claim 1 necessarily includes every limitation of the methods by which the
same low PAH, low sulfur petroleum pitch feedstock of Claim 11 are
produced. However, from our comparison of the common properties of the
low sulfur pitch feedstock of Claim 11 to the low sulfur and low PAH
petroleum pitch feedstock which is produced by the method of Claim 1, we
find that a low sulfur, low PAH petroleum pitch feedstock produced by the
method of Claim 1 reasonably appears at least in part to be the same or
substantially the same as low sulfur petroleum pitch feedstock within the
scope of Claim 11. As is apparent from dependent Claims 8 (dependent on
Claim 1) and 25 (dependent on Claim 11), low sulfur pitch feedstock
produced by the methods defined in Claims 1 and 11 have identical or
substantially identical properties.
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Properties of Low Sulfur Petroleum Feedstock of Claims 8(1) and 25(11)
Softening Point, Mettler, 70-130 oC
Coking Value, Conradson Carbon 38 wt% min.
Sulfur 1.00 wt% max.
Ash 0.2 wt% max.
Quinoline Insolubles 0.5 wt% max.
Toluene Insolubles 2.0-10.0 wt%
Flash Point 250 oC min.
Density ~1.20 g/cc min.

Furthermore, interpreting the claim language as a whole, we conclude
that the steps in Claims 1 and 11 of “producing a resulting, low PAH, low
sulfur petroleum pitch feedstock having a sulfur content less than 1 wt% and
less than 15,000 mg/kg of PAH” (1) do not require that significant amounts
of PAH exist in the initial supply of petroleum feedstock to be hydrotreated;
(2) do not require that the level of PAH in the initial supply of petroleum
feedstock must be reduced by the hydrotreatment, at least to the extent that
less than 15,000 mg/kg of PAH existed in the initial supply of petroleum
feedstock; and (3) do not require that the level of PAH in the initial supply
of petroleum feedstock must be reduced by the hydrotreatment to levels
significantly lower than 15,000 mg/kg of PAH. In short, the supply of
petroleum feedstock need not ever have contained measurable amounts of
PAH before hydrotreatment, need not contain less than initial low levels of
PAH after hydrotreatment, and need not contain levels of PAH significantly
lower than 15,000 mg/kg of PAH after hydrotreatment.
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Comparative Facts
Method Claim 1 includes the process step of “hydrotreating a supply
of petroleum feedstock of relatively high sulfur fractions derived from crude
oil having an initial sulfur content of about 1 wt% or greater” in accordance
with method Claim 1 (Br. App., Claim 1). Product-by-process Claim 11
recites the process step of “severely hydrotreating a supply petroleum
feedstock of relatively high sulfur content fractions derived from crude oil
having an initial sulfur content of about 2 wt% or greater” (Br. App., Claim
11). Both the hydrotreating step of Claim 1 and the severe hydrotreating
step of Claim 11 must produce “low PAH, low sulfur petroleum pitch
feedstock having a sulfur content less than 1 wt% and less than 15,000
mg/kg of PAH” (Br. App. Claims 1 & 11).
We proceed to list the particulars of the hydrotreating and severe
hydrotreating steps for the processes described in Appellants’ Specification
for comparison to the particulars of the hydrotreating step of Didchenko’s
process in the following table.
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Comparative Hydrotreatment (HT) Processes
Procedure Specification Didchenko
Supply of high sulfur high sulfur1 decant oil high sulfur2 decant oil
crude oil fractions (Claims 4 & 14) (col. 2, ll. 38-48;
col. 3, ll.1-3 & 53-57;
col. 4, ll. 1-11 & 44-50;
col 5, l. 34,-col. 6, l. 2;
Exs. 1-5 & Table 1)

Hydrotreatment (HT) catalytic hydrogenation catalytic hydrogenation
(p. 2, ll. 20-25; (col. 3, ll. 8-9;
p. 4, ll. 22-27; col. 5, ll. 40-51)
p. 5, ll. 14-16;
p. 6, ll. 1-16;
Claims 7 & 17)

1 As per Appellants’ Claims 1 and 4, the high sulfur decant oil has an
initial sulfur content of about 1 wt% or greater. As per Appellants’ Claims
11 and 14, the high sulfur decant oil has an initial sulfur content of about 2
wt% or greater.
2 According to Didchenko, col. 2, ll. 46-48, “The decant oil used in the
art for making a feedstock for mesophase pitch has a low sulfur content in
the range of from about 1% to about 2.5% by weight.” In Didchenko’s
Table 1 (bridging cols. 9 & 10), the patentee reports that the initial sulfur
content of decant oils before hydrotreatment was 1.6 wt% (Exs. 1-2), 1.12
wt% (Ex. 3), and 2.35 wt% (Exs. 4-6).
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HT chamber pressure A. 800-1,500 psi; 500-1,500 psig (broad)3
(Claim 6; 600-1200 psig (prefer) 4
p. 4, ll. 22-25; (col. 3, ll. 4-9, “as taught
p. 5, ll. 22-25) in U.S. Pat. No.
4,075,084 to Skripek”)
B. about 1,100 psi
(Claim 16)

C. 1000-5000 psig,
preferably, 1500-3500 psig,
most pref., 1,400-1,500 psig
(p. 5, ll. 1-6)

HT chamber temp. A. 500oF 500-800oF (broad)5
(p. 4, ll. 24-25) 600-750oF (prefer)6
(col. 3, ll. 4-9, “as taught
in U.S. Pat. No.
4,075,084 to Skripek”)
B. about 300oC to 450oC,
preferably
about 350oC to 400oC
(p. 5, ll. 1-6)

3 Didchenko’s HT chamber pressure is taken from Skripek, U.S.
4,075,084, patented February 21, 1978, col. 3, Table at ll. 50-55 thereof.
The Examiner cited Skripek and relied upon its disclosure for Didchenko’s
HT conditions and catalysts (Answer, p. 3).
4 Didchenko’s preferred HT chamber pressure is taken from Skripek,
U.S. 4,075,084, patented February 21, 1978, col. 3, Table at ll. 50-55
thereof. The Examiner cited Skripek and relied upon its disclosure for
Didchenko’s HT conditions and catalysts (Answer, p. 3).
5 Didchenko’s HT chamber temperature is taken from Skripek, U.S.
4,075,084, patented February 21, 1978, col. 3, Table at ll. 50-55 thereof.
The Examiner cited Skripek and relied upon its disclosure for Didchenko’s
HT conditions and catalysts (Answer, p. 3).
6 Didchenko’s preferred HT chamber temperature is taken from
Skripek, U.S. 4,075,084, patented February 21, 1978, col. 3, Table at ll. 50-
55 thereof. The Examiner cited Skripek and relied upon its disclosure for
Didchenko’s HT conditions and catalysts (Answer, p. 3).
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We find that the high initial sulfur content of the decant oils to be
hydrotreated and/or severely hydrotreated in accordance with the
Appellants’ disclosure (>1wt% sulfur (Claim 1); >2 wt% sulfur (Claim 11))
include the low initial sulfur content of the decant oils to be hydrotreated in
accordance with the Didchenko’s disclosure (1-2.5 wt% sulfur in general;
1.2-2.35 wt% sulfur in Didchenko’s Examples 1-6). We find that
Appellants’ hydrotreating steps, like the hydrotreating step of Didchenko’s
process, include catalytic hydrotreating a 1-2.5 wt% sulfur decant oil in a
hydrotreatment chamber at a temperature between about 500 oF to about
800oF and at a pressure between about 800 to about 1,500 psig. Moreover,
we find that the low sulfur pitch feedstocks produced by Didchenko’s
process of making low sulfur pitch feedstock and by Appellants’ processes
of making low sulfur/low PAH petroleum pitch feedstock have many
common properties. For example, see the following tabulation:

Appellants’ and Didchenko’s Low Sulfur Petroleum Pitch Feedstock

Properties Appellants’ Didchenko’s
Softening Point, Mettler, 70-130oC 104oC
(Claims 8 & 25) (Ex. 5, col. 8,
ll. 8-18)
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Coking Value, Conradson Carbon 38 wt% min. “preferably greater
(Claims 8 & 25) than about 30%
but not greater
than about 65%”
(col. 4, ll. 51-54);
“preferably greater
than about 10%
but less than
about 65%”
(col 5, ll. 3-6)

Sulfur 1.00 wt% max. 0.45-0.79 wt%
(Claims 8 & 25) (Table 1, col. 10)
Ash 0.2 wt% max. -

Quinoline Insolubles 0.5 wt% max. -

Toluene Insolubles 2.0-10.0 wt% -

Flash Point 250oC min. -

Density ~1.20 g/cc min. -

Didchenko does not disclose information relating to “Ash”,
“Quinoline Insolubles”, “Toluene Insolubles”, “Flash Point” and “Density”
for any of the low sulfur precursor pitch feedstock it produces. Moreover,
Didchenko does not specify the level of PAH in the low sulfur precursor
pitch feedstock it produces. However, Didchenko’s disclosure is directed to
persons having ordinary skill in the art, with all reasonably attributable
knowledge of the art (Didchenko, col. 3, ll. 4-21; emphasis added):
It would be desirable to subject the high sulfur decant oil to a
hydrodesulfurization in accordance with known processes such as
taught in U.S. Pat. No. 4,075,084 to Skripek et al or U.S. Pat. No.
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4,166,026 to Fukui et al. Generally, the hydrodesulfurization contacts
a hydrocarbon oil with hydrogen in the presence of a catalyst.
It is, however, well known that hydrotreating reduces the
aromaticity of hydrocarbon oils . . . . The references, “Catalysis”,
Vol. V, edited by P. H. Emmett, published by Rheinhold Publishing
Corp., New York, 1957, and “Catalytic Processes and Proven
Catalysts”, edited by C. L. Thomas, Academic Press (1970), point out
that hydrotreating reduces aromaticity.

Persons having ordinary skill in the art would have understood from
Didchenko’s statement that “[i]t is . . . well known that hydrotreating
reduces the aromaticity of hydrocarbon oils” and “hydrotreating reduces
aromaticity” (id.) that well known desulfurization hydrotreatment of high
sulfur decant oils hydrogenates “a significant portion of the aromatic
hydrocarbons, particularly the polycyclic hydrocarbons . . .” (Col. 1,
ll. 38-40, of Skripek et al, U.S. Pat. 4,075,084, patented February 21, 1978,
cited by Didchenko, col. 3, ll. 4-6, as disclosing a known process).
Therefore, persons having ordinary skill in the art reasonably would have
expected well known hydrotreatment of high sulfur decant oils to reduce
whatever level of PAH was initially present in Appellants’ “supply of
petroleum feedstock of relatively high sulfur content fractions derived from
crude oil having an initial sulfur content of about 1 wt% or greater” (Br.
App. Claim 1) and “supply of petroleum feedstock of relatively high sulfur
content fractions derived from crude oil having an initial sulfur content of
about 2 wt% or greater” (Br. App. Claim 11). In our view, therefore, a
person having ordinary skill in the art would have reasonably predicted that
Didchenko’s hydrotreatment step not only would have reduced the sulfur
content of its initial decant oil, but also would have hydrogenated, and thus
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reduced, whatever level of aromatic polycyclic hydrocarbons existed in the
initial decant oil to a significant degree.7

Discussion
To anticipate in terms of 35 U.S.C. § 102, a single prior art reference
must describe every element of the claimed subject matter. In re Bond, 910
F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990); Diversitech Corp.
v. Century Steps, Inc., 850 F.2d 675, 677, 7 USPQ2d 1315, 1317 (Fed. Cir.
1988). To establish the obviousness of the claimed subject matter under 35
U.S.C. § 103 in view of prior art teachings, all the claim limitations must be
taught or suggested by the prior art. In re Royka, 490 F.2d 981, 985, 180
USPQ 580, 583 (CCPA 1974). In this case, however, we need not find that
Didchenko expressly or explicitly describes every limitation of the subject
matter Appellants claim to affirm the Examiner’s rejection of the claimed
subject matter under 35 U.S.C. § 102(b) as anticipated by Didchenko, or
under 35 U.S.C. § 103 for obviousness in view of Didchenko’s teaching.
Anticipation can be found over, and a prima facie case of obviousness can
be established in view of, a single prior art reference which reasonably
appears to inherently or otherwise implicitly describe all the claim
limitations and thus reasonably suggest the claimed subject matter to a
person having ordinary skill in the art.
Appellants understood that the Examiner was attempting to establish
low PAH inherency based on similarities between the subject matter
Appellants claim and the low sulfur pitch feedstock produced by Didchenko

7 We repeat our conclusion that Appellants’ claims do not require the
presence of significant amounts of PAH in the high sulfur initial decant oils.
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13
(SBr., pp. 7-8). According to Appellants, however, “Didchenko . . . is
deficient” (SBr., pp. 8 and 9).
The Examiner cited and followed In re Best, 562 F.2d 1252, 195
USPQ 430 (CCPA 1977). Particularly with regard to process claims, Best
instructs at 1254, 195 USPQ at 433:
This court, in In re Swinehart, 58 CCPA 1027, 439 F.2d 210,
169 USPQ 226 (1971), set forth the burden of proof required to
overcome an inherency rejection:

[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things
in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art. Additionally, where the Patent
Office has reason to believe that a functional limitation asserted
to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art,
it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied upon. [58 CCPA at 1031, 439 F.2d at
212-13, 169 USPQ at 229.] This burden . . . is applicable
to product and process claims reasonably considered as
possessing the allegedly inherent characteristics.

In this case, we find sufficient evidence in Didchenko (and in Skripek,
U.S. Patent 4,075,085, patented February 21, 1978, cited by Didchenko
(Didchenko, col. 3, ll. 4-25) to particularly describe and define the known
hydrosulfurization process Didchenko employed to make and use its low
sulfur pitch feedstock precursor) to reasonably suggest that Didchenko either
made and used, or would have taught persons having ordinary skill in the art
how and why to make and use, “low PAH, low sulfur petroleum pitch
feedstock having a sulfur content less than 1 wt% and less than 15,000
mg/kg of PAH” (Br. App. Claims 1 and 11) by the same or substantially the
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14
same process steps defined by Appellants’ claims. Accordingly, Appellant
had the burden of proof to overcome the Examiner’s inherency rejection.
We have considered all the evidence relied upon by the Examiner in
support of inherency and all the evidence and arguments to the contrary to
which Appellants point. We find that the Examiner’s case for inherency is
based on a preponderance of the evidence and quite reasonable. We find
Appellants’ repetitive arguments to the contrary somewhat shy of supporting
evidence. More specifically, Appellants had the burden to prove that the
Examiner’s inherency rejection was either wrong or unreasonable.
Appellants did neither.
Best promulgates the rules that: (1) a composition and all its
properties are one; and (2) newly discovered properties do not make an old
composition new. The Court in Best recognized, as it did earlier in In re
Brown, 459 F.2d 531, 1041, 173 USPQ 685, 688 (CCPA 1972)(“As a
practical matter, the Patent Office is not equipped to manufacture products
by the myriad of processes put before it and then obtain prior art products
and make physical comparisons.”), when it said, In re Best, 562 F.2d at
1255, 195 USPQ at 433-34 (footnote omitted):
Whether the rejection is based on “inherency” under 35 USC 102, on
“prima facie obviousness” under 35 USC 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by the
PTO’s inability to manufacture products or to obtain and compare
prior art products.

A patent should not be granted 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 subject matter
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pertains. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d
1385, 1391 (2007). Anticipation has long been recognized as the epitome of
obviousness. In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644
(CCPA 1974).
Common sense is the key to determining unpatentability. KSR Int’l
Co. v. Teleflex Inc., 127 S.Ct. at 1742, 82 USPQ2d at 1397. To paraphrase
an old saying, “If it looks like a duck, walks like a duck, and quacks like a
duck, it should be a duck.” In re Swinehart, 439 F.2d at 212, 169 USPQ at
229, said the same thing, but with less panache. “[M]ere recitation of a
newly discovered function or property, inherently possessed by things in the
prior art, does not cause a claim drawn to those things to distinguish over the
prior art.” Id. The PTO, of course, would have entertained and evaluated
timely submitted evidence to the contrary; apparently Appellants made a
litigation decision not to submit any needed evidence.

Conclusion
Having considered all the evidence of record and arguments for and
against the patentability of Claims 1-17 and 25-33 of Application
10/443,649, we affirm the Examiner’s final rejection of Claims 1, 2, 4, 6-12,
14, 16, 17, and 25-33 under 35 U.S.C. § 102(b) or under 35 U.S.C. § 103
over Didchenko, U.S. Patent 4,645,584, patented February 24, 1987; and
affirm the Examiner’s final rejection of Claims 3, 5, 13, and 15 under 35
U.S.C. § 103 in view of Didchenko.

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16
Order
Upon consideration of the appeal, and for the reasons given, it is
ORDERED that the decisions of the Examiner rejecting Claims 1, 2,
4, 6-12, 14, 16, 17, and 25-33 of Application 10/443,649 under 35 U.S.C. §
102(b) and rejecting Claims 1-17 and 25-33 of Application 10/443,649
under 35 U.S.C. § 103(a) are affirmed; and
FURTHER ORDERED that the time for taking future action in this
appeal cannot be extended under 37 CFR § 1.136(a)(2006).

AFFIRMED

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