Ex Parte Tio

Board of Patent Appeals and Interferences

Dec 16, 2010

10553164 (B.P.A.I. Dec. 16, 2010)

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.
10/553,164 07/05/2006 Thian Hoey Tio TS1519 US 9075
23632 7590 12/16/2010
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
HANDAL, KAITY V
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
12/16/2010 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 THIAN HOEY TIO
________________

Appeal 2009-015000
Application 10/553,164
Technology Center 1700
________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board by TIMM, Administrative Patent Judge.

Dissenting Opinion by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015000
Application 10/553,164

2
A. Introduction2
Thian Hoey Tio (“Tio”) timely appeals under 35 U.S.C. § 134(a) from
the final rejection3 of claims 1-10, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to processes of preparing
synthesis gas, i.e., a mixture of carbon monoxide and hydrogen, by a partial
oxidation reaction of a carbonaceous feed stock in a burner and by a steam
reforming reaction of a carbonaceous feedstock. (Spec. 1, ll. 2-5.) The
carbonaceous feedstock is preferably methane or natural gas (C1-4
hydrocarbons). (Id. at 4, ll. 8-10.) The steam and the natural gas are fed at a
molar ratio of steam to carbon of less than 1 into a convective tubular steam-
reformer reactor (“CSR”), resulting in a product that contains, in addition to
CO and H2, a relatively large portion of unconverted methane. (Id. at 2,
ll. 16-19 and at 3, ll. 8-13.) The methane is later partially oxidized to CO
and H2 and the resulting synthesis gas converted into a hydrocarbons-
containing stream via a Fischer-Tropsch process. (Id. at 3, ll. 23-29 and 10,
ll. 15-23.)

2 Application 10/553,164, Process to Prepare Synthesis Gas, entered the
national stage on 5 July 2006, of an international application filed 13 April
2004, claiming the benefit of an EP application filed 15 April 2003. The
specification is referred to as the “164 Specification,” and is cited as “Spec.”
The real party in interest is listed as Shell Oil Co. (Revised Appeal Brief,
filed 23 February 2009 (“Revised Br.”), 2.)
3 Office action mailed 15 June 2007.
Appeal 2009-015000
Application 10/553,164

3
Representative Claim 1 reads:
1. A process for the preparation of a gas containing hydrogen
and carbon monoxide from a carbonaceous feedstock and its
conversion to a hydrocarbons containing stream, the process
comprising:
(a) partially oxidizing a carbonaceous feedstock in a
vertically oriented tubular partial oxidation reactor vessel
having an upper end and a lower end, the vessel comprising a
burner at the upper end, thereby obtaining an effluent
comprising a first gaseous mixture of hydrogen and carbon
monoxide;
(b) catalytically steam reforming a carbonaceous feedstock by
feeding a feed of steam and the carbonaceous feedstock to a
convective steam reformer comprising a tubular reactor
provided with one or more tubes containing the reforming
catalyst, wherein the steam to carbon molar ratio of the feed
is below 1, to obtain a steam reforming product;
(c) feeding the steam reformer product to the upper end of the
partial oxidation reactor to obtain a mixture of the effluent of
step (a) and the steam reformer product; and
(d) providing heat for the steam reforming reaction in step (b)
by convective heat exchange between the mixture obtained in
step (c) and the steam reformer reactor tubes thereby
obtaining a hydrogen and carbon monoxide containing gas
having a reduced temperature;
(e) catalytically converting the hydrogen and carbon
monoxide containing gas of step (d) using a Fischer-Tropsch
catalyst into a hydrocarbons containing stream; and
(f) separating the hydrocarbons containing stream of step (e)
into a hydrocarbon product comprising 5 or more carbon
atoms and a gaseous recycle stream comprising nitrogen,
unconverted methane and other feedstock hydrocarbons,
unconverted carbon monoxide, carbon dioxide, hydrogen and
water and recycling the recycle stream to step (a) and/or (b).
(Claims App., Revised Br. 6; indentation and emphasis added.)
Appeal 2009-015000
Application 10/553,164

4
The Examiner has maintained the following grounds of rejection:4
A. Claims 1-9 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Fuderer,5 Bertaux,6
and Parkhurst.7
B. Claim 10 stands rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Fuderer, Bertaux,
Parkhurst, and Eilers.8
B. Discussion
Tio’s sole contention is that:
As noted above, the present invention has a steam to
carbon molar ratio below 1. There is no teaching or suggestion
in the Fuderer reference of having a steam to carbon ratio below
1. The ratio in the present invention is substantially outside the
range of 2-4 disclosed in Fuderer. There is no overlap in the
claimed ranges nor are the claimed ranges adjacent to each
other. Accordingly, Applicants submit that a person of ordinary
skill in the art could not optimize Fuderer within the disclosed
ranges to obtain the presently claimed invention. It is only by
hindsight that one of skill in the art having the teachings of
Fuderer beforehand would be able to arrive at the present
invention.
(Revised Br. 4.)

4 Examiner’s Answer mailed 31 March 2008 (“Ans.”).
5 Andrija Fuderer, Integrated Process and Apparatus for the Primary and
Secondary Catalytic Steam Reforming of Hydrocarbons, U.S. Patent
4,650,651 (1987).
6 Jean-Marie Alexandre Bertaux et al., EP 0 776 959 B1 (1997).
7 George L. Parkhurst, U.S. Patent 2,324,172 (1943).
8 Jacobus Eilers et al., EP 0 668 342 A1 (1995).
Appeal 2009-015000
Application 10/553,164

5
The Examiner finds that there is a suggestion in Fuderer for using
ratios outside the specifically disclosed 2/1 to 4/1 ratio that supports a
conclusion of obviousness (Ans. 4-5 and 9-10).
The issue is: Does the evidence as a whole support the Examiner’s
findings and conclusions with respect to the steam to carbon molar ratio?
Because a preponderance of the evidence supports the conclusion of
the Examiner, we answer this question in the affirmative.
With respect to the ratio of steam to hydrocarbon, Fuderer states:
The ratio of steam to hydrocarbon feed will vary, as is
known in the art, depending upon the overall conditions
employed in the reforming zones. The amount of steam
employed is influenced by the general requirement of avoiding
carbon deposition on the catalyst and by the acceptable amount
of methane remaining in the effluent gas under the reforming
conditions employed. On this basis, the mole ratio of steam to
hydrocarbon feed in the conventional primary reformer unit is
preferably from about 2/1 to about 4/1.
(Fuderer, col. 8, ll. 47-56 (emphasis added).)
Under the flexible inquiry set forth by the Supreme Court, the
examiner must take account of the “inferences and creative steps,” or even
routine steps, that an ordinary artisan would employ. Ball Aerosol And
Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
“All the disclosures in a reference must be evaluated, including nonpreferred
embodiments.” In re Mills, 470 F.2d 649, 651, CCPA 1972).
Appeal 2009-015000
Application 10/553,164

6
Appellant’s discussion of the evidence overlooks the fact that the ratio
of 2/1 to 4/1 disclosed by Fuderer is merely a preferred ratio. This fact, in
itself, implies that other ratios could be used. Further, as pointed out by the
Examiner, and not disputed by Appellant, Fuderer includes a broader
disclosure indicating that the ratio of steam to hydrocarbon “will vary” and
that it depends on conditions in the reforming zones (Ans. 4-5 and 9-10;
Revised Br. 3-4). Fuderer provides guidance for the acceptable minimum
concentration of steam: Enough steam must be used to prevent catalyst
fouling, and convert acceptable amounts of methane (Fuderer, col. 8, ll. 49-
53).
The evidence supports the Examiner’s finding that the ratio is a result
effective variable for which the optimum or workable ranges would have
been obtained through routine experimentation. The fact that the preferred
ratio does not overlap the claimed range does not negate the other evidence
of record indicating that workable ranges outside the preferred range were
within the capability of the ordinary artisan performing routine
experimentation.
The Examiner further finds, without dispute by Appellant, that it was
desirable in the reforming art to minimize the level of steam (Ans. 4;
Revised Br. 3-4). Appellant offers no reasonable basis to believe that using
ratios of steam to carbon below 1 was not within the capabilities of the
ordinary artisan (Revised Br. 3-4).
Weighing the evidence as a whole, including the evidence relied upon
by Appellant, we determine that the evidence supports the Examiner’s
conclusion of obviousness.
Appeal 2009-015000
Application 10/553,164

7
C. Order
We sustain the rejection of claims 1-9 under 35 U.S.C. § 103(a) in
view of the combined teachings of Fuderer, Bertaux, and Parkhurst.
We sustain the rejection of claim 10 under 35 U.S.C. § 103(a) in view
of the combined teachings of Fuderer, Bertaux, Parkhurst, and Eilers.
Accordingly, we affirm the decision of the Examiner.
AFFIRMED

Appeal 2009-015000
Application 10/553,164

8
NAGUMO, Administrative Patent Judge, dissenting.
The majority faults Tio for failing to acknowledge that the range of
steam-to-carbon molar ratio of 2-4 disclosed by Fuderer as the feed for the
conventional primary reformer unit is “merely a preferred ratio.” (Majority
Opinion 6.) Tio, in the passage quoted supra, does not dispute that the feed
ratio was known to be result-effective over that range. But Tio does deny
that Fuderer provides any teaching or suggestion that would have led the
person having ordinary skill in the art to pass a steam-to-carbon molar ratio
less than one into the conventional primary steam reformer described by
Fuderer.
The difficulty with the Majority’s position is that the prior art must
provide evidence that a particular parameter was recognized as being a result
effective variable in the range recited in the claims. Application of Antonie,
559 F.2d 618, 620 (CCPA 1977). However, neither the Examiner nor the
Majority has pointed to any credible evidence in the record that operation of
a tubular steam reforming reactor at steam-to-carbon molar ratios less than
one was recognized as an effective regime for any purpose consistent with
the goals of Fuderer. In my judgment, the general principles on which the
Majority and the Examiner rely are insufficient to show such recognition at
the time the invention was made.
The Examiner does not rely on the secondary references to cure this
defect. Accordingly, I would reverse the rejections for obviousness and I
must, respectfully, dissent.

Appeal 2009-015000
Application 10/553,164

9
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SHELL OIL COMPANY
P. O. BOX 2463
HOUSTON, TX 77252-2463