Ex Parte Mehra et al

Patent Trial and Appeal Board

Jan 22, 2015

11186204 (P.T.A.B. Jan. 22, 2015)

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.
11/186,204 07/20/2005 Yuv R. Mehra 206,992 5550
38137 7590 01/23/2015
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
01/23/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUV R. MEHRA and
ALI H. AL-ABDULAI
____________

Appeal 2013-005769
Application 11/186,204
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1–38 over Mehra et al. (US 6,740,226 B2, issued
May 25, 2004). An oral hearing was conducted January 6, 2015. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is illustrative of the claimed subject matter (emphasis added):
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2
1. A process for hydrogenating a feedstream in a
hydroprocessing reactor, the feedstream comprising a heavy
hydrocarbon liquid component, the reactor also receiving a
hydrogen gas input component, the reactor producing a reactor
effluent that is separated into an effluent liquid stream and an
effluent gas stream, the effluent gas stream comprising
unreacted hydrogen, methane and heavier hydrocarbons, the
process comprising:
a. compressing the effluent gas stream and a make-up
hydrogen gas stream in a recycle gas compressor to produce a
compressed recycle gas stream containing unreacted hydrogen,
methane and heavier hydrocarbons from the effluent gas
stream, and make-up hydrogen from the make-up hydrogen gas
stream;
b. cooling the compressed recycle gas stream to a
temperature in the range of +30◦F (-1.1◦C) to -40◦F (-40◦C)1;
c. contacting the cooled compressed recycle gas stream
with a lean liquid solvent stream comprising C4 to C5
hydrocarbon components in an absorption zone to absorb the
methane and heavier hydrocarbons from the compressed
recycle gas stream to produce a hydrogen-rich gas stream
containing 90 to 99 mol% hydrogen and a rich liquid solvent
stream;
d. recovering the hydrogen-rich gas stream from the
absorption zone;
e. adding the hydrogen-rich gas stream to the
hydroprocessing reactor feedstream as the hydrogen gas input
component; and
f. flashing the rich liquid solvent stream in at least one
flashing stage to produce the lean liquid solvent stream

1 In any further prosecution of this case, the apparent discrepancy of the
conversion of 40◦F to degrees Celsius should be clarified or corrected in
claims 1 and 37.
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comprising C4 to C5 hydrocarbon components for contacting the
cooled compressed recycle gas stream in step (c), and to
produce a methane and heavier hydrocarbons gas product
stream.

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. While Appellants’ arguments mainly focus on independent
claims 1 and 37 (App. Br. 10–16), the main limitation relied upon to
distinguish the claims over the prior art is only reflected in dependent claim
38. We are in agreement with the Examiner that the claimed subject matter
of representative claim 1 (as well as claim 37) is unpatentable under § 103(a)
in view of the applied prior art. On the other hand, Appellants’ have
established by a preponderance of the evidence that the Examiner has not
established that the subject matter of claim 38 is obvious based on the
applied prior art. Accordingly, we will sustain the Examiner’s prior art
rejection with respect to claims 1–37, and reverse the rejection with respect
to claim 38.
We add the following primarily for emphasis.
There is no dispute that each of the claimed steps is generally known
from the Mehra patent; rather it is “the overall sequence of the steps and the
content of the streams being acted upon” that is the focus of Appellants’
arguments (App. Br. 10). Appellants’ main argument is that they discovered
a solution to a problem when trying to commercialize their own prior art
invention, and discovered that they needed to perform the “non-intuitive and
seemingly illogical” step of first compressing the effluent gas stream, which
has a lower concentration of hydrogen gas, before the cooling and
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4
absorption step (App. Br. 13), whereas Mehra’s steps are in the reverse order
and perform the cooling and absorption step before compressing the effluent
gas stream.2 This argument is not persuasive with respect to claims 1–37.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). However, limitations from the specification are
not to be read into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”).
“[T]he term ‘comprises’ permits the inclusion of other steps,
elements, or materials.” In re Baxter, 656 F.2d 679, 686 (CCPA 1981);
Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1383 (Fed.
Cir. 2000) (“A drafter uses the term ‘comprising’ to mean ‘I claim at least
what follows and potentially more.’”). When evaluating references, it is
proper to take into account not only the specific teachings of the references

2 Appellants’ rely upon the Mehra Declaration in support of their arguments,
which was filed Dec. 9, 2010 during prosecution of this case (e.g., App. Br.
10–16). Mehra is a co-inventor of the present application as well as the
applied prior art Mehra patent (App. Br. 10). Appellants are reminded that
they should include such declaration evidence in the “Evidence” appendix of
the Appeal Brief.
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but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).3
As pointed out by the Examiner, the Mehra patent teaches explicitly
that “a low pressure hydrogen-rich gas stream” may be “compressed and
chilled prior to entering the absorption zone (b) for co-processing” (Mehra,
col. 13, ll. 46–51; Ans. 6, 14). Appellants argue that the Examiner’s reliance
upon this passage of Mehra is misplaced because “the effluent gas stream of
the appealed claim is from the high-pressure separator” versus the low-
pressure separator of Mehra’s discussion in column 13 (Reply Br. 2).
However, Appellants have not directed us to any persuasive reasoning or
evidence that either of independent claims 1 and 37 is so limited.
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The only claim
on appeal limited to this distinction is dependent claim 38,4 which recites
The process of claim 1, wherein the reactor effluent is separated
with a high pressure separator, and the effluent gas stream

3 It has also been established that a prima facie case of obviousness may be
established if the particular order of steps does not produce “results differing
in any way from those which would be brought about if another order of
steps were followed.” In re Hampel, 162 F.2d 483, 485–486 (CCPA 1947);
see also In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (selection of any
order of performing process steps is prima facie obvious in the absence of
new or unexpected results).
4 While dependent claim 6 recites that the “reactor effluent is separated
using a high pressure separator” it does not require that this stream per se is
passed to the compressor of step (a) of claim 1. Nor is the recycle
compressor of claim 1 limited to a recycle compressor “designed to
compress gases with average molecular weights greater than five” as recited
in independent claim 37 upon which claim 38 depends (e.g., App. Br. 15,
16).
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compressed in step (a) is the effluent gas stream from a5 high
pressure separator.

(Claim 38, Claims App’x.)

Accordingly, claim 38 appears to be more tailored with Appellants’
identification of the problem and solution as discussed in the Mehra
Declaration. Because the Examiner has not adequately addressed how the
Mehra patent teaches or suggests the process as recited in claim 38 in light
of the Mehra Declaration, we reverse the rejection with respect to claim 38.
Therefore, we affirm the Examiner’s § 103 rejection of claims 1–37
on appeal, but reverse the rejection with respect to claim 38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED-IN-PART

cdc

5 It appears that “a” should be changed to “the.”