Ex Parte Nahas

Board of Patent Appeals and Interferences

Aug 24, 2011

11249814 (B.P.A.I. Aug. 24, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/249,814 10/12/2005 Nicholas Charles Nahas FN-0001 2472
77003 7590 08/24/2011
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
SUITE 3100
CHICAGO, IL 60606
EXAMINER
MERKLING, MATTHEW J
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
08/24/2011 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 NICHOLAS CHARLES NAHAS
____________

Appeal 2010-005054
Application 11/249,814
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 13 and 15 through 21. We have jurisdiction under
35 U.S.C. § 6.
Appellant’s invention relates “to processes for converting petroleum
coke to methane.” App. Br. 1. Claim 1 is illustrative:

Appeal 2010-005054
Application 11/249,814

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1. A process for converting petroleum coke to methane,
comprising

combining petroleum coke and a catalyst having steam
gasification activity in an aqueous medium to form a feed
slurry;

introducing said feed slurry and superheated steam into a
slurry drier to produce net steam and substantially dry solid
particles of petroleum coke impregnated with catalyst;

reacting said dry solid particles with said net steam in a
gasification reactor to form a raw product gas comprised of
unreacted steam, methane, carbon dioxide, hydrogen, and
carbon monoxide;

recovering methane from said raw product gas; and

controlling the concentration of catalyst in said aqueous
medium based on the amount of ash in said petroleum coke.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Nahas US 4,284,416 August 18, 1981
Soung US 4,459,138 July 10, 1984
Tamai et al. US 4,466,828 August 21, 1984
Aquino et al. US 4,604,105 August 5, 1986
Schlinger US 4,781,731 November 1, 1988
Schwarz et al. US 4,960,450 October 2, 1990

Appellant requests review of the following rejections from the
Examiner’s final office action:
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Application 11/249,814

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1. Claims 1-8, 10-13, 15, and 19-21 stand rejected under
35 U.S.C. 103(a) as being unpatentable over Aquino in view of Nahas and
further evidenced by Schlinger and Schwarz.
2. Claim 9 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Aquino in view of Nahas and further evidenced by
Schlinger and Schwarz as applied to claim 7 above, and further in view of
Soung.
3. Claims 16-18 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Aquino in view of Nahas and further evidenced by
Schlinger and Schwarz as applied to claims 1, 7, and 15 above, and further
in view of Tamai.

OPINION
The prior art rejections 1
The dispositive issue on appeal is: Did the Examiner err in
determining that a person with ordinary skill in the art would have
recognized the petroleum coke of Schlinger as a suitable carbonaceous
material for use in the process of Aquino?2, 3
We answer this question in the affirmative and, therefore, we reverse.
The Examiner found that Aquino teaches a process similar to
Appellant’s claimed process. Ans. 3. The Examiner found that Aquino

1 We need only discuss independent claim 1.
2 The same issue controls the separate obviousness rejections of claim 9 and
of claims 16-18.
3 A discussion of the Schwarz, Tamai, Soung, and Nahas references is
unnecessary for disposition of the present appeal. The Examiner relied upon
these reference for describing features not related to the dispositive issue.

Appeal 2010-005054
Application 11/249,814

4
“does not explicitly state petroleum coke as the solid feedstock” (Ans. 4.),
but that Aquino “discloses that the feedstock can comprise similar
carbonaceous compounds to coal” (Ans. 5). The Examiner relies on
Schlinger to teach that “petroleum coke is viewed in the art as being a
carbonaceous solid that is similar to coal.” Id. The Examiner concluded that
“Aquino implies the use of petroleum coke as the carbonaceous material.”
Id.
Appellant argues that “petroleum coke is a derived product typically
made by processing oil and oil-related products.” App. Br. 6. More
specifically, Appellant argues that Aquino’s process uses “carbonaceous
solids which contain volatilizable hydrocarbon constituents” (App. Br. 7-8;
emphasis omitted) and that “[p]etroleum coke is [] a solid end product where
a very high proportion (if not substantially all) of the ‘volatile’ components
have been removed” (App. Br. 7). See Spec., paragraphs [0004] – [0006].
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We agree with Appellant that the Examiner has not adequately
explained why a person of ordinary skill in the art would have used the
petroleum coke of Schlinger in the process of Aquino. While the Examiner
relies on Schlinger to show “the interchangeability of coal and petroleum
coke” as known in the art (Ans. 13), the Examiner has not adequately
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Application 11/249,814

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addressed Appellant’s argument that the petroleum coke lacks the
volatilizable hydrocarbon content required by Aquino’s process or explained
why a person of ordinary skill in the art would have reasonably expected that
the petroleum coke of Schlinger would have been suitable for use as
Aquino’s carbonaceous material. Consequently, the Examiner has not
adequately addressed why one skilled in the art would have reasonably
expected that petroleum coke would contain sufficient volatilizable
hydrocarbon constituents for use in Aquino’s process and therefore render
the subject matter of independent claim 1 unpatentable within the meaning
of §103(a).
For the reasons stated above and those presented by Appellants, the
rejections of claims 1-21 under 35 U.S.C. § 103(a) are reversed.

ORDER
The rejections of claims 1-21 under 35 U.S.C. § 103(a) are reversed.
REVERSED

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