Ex Parte Van Wees et al

Patent Trials and Appeals Board

Oct 14, 2014

12495543 - (D) (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK VAN WEES, ROBERT S. HAIZMANN,
and DANIEL B. GILLIS
____________

Appeal 2013-002261
Application 12/495,543
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and MICHELLE N.
ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is UOP LLC, a wholly owned subsidiary of
Honeywell International Inc. Br. 2.
Appeal 2013-002261
Application 12/495,543

2
The Invention
Appellants claim an apparatus for preparing hydrocarbon feed for
slurry hydrocracking (SHC) and for processing the SHC product using
solvent deasphalting (SDA). Spec. ¶ 1. SHC and SDA are used for the
primary upgrading of heavy hydrocarbon feedstocks. Id. ¶¶ 3–4. Claims 1
and 17 are representative of the claims on appeal, and are reproduced below
from the Claims Appendix to the Appeal Brief:
1. An apparatus for converting heavy hydrocarbons to lighter
hydrocarbons comprising:
a first extraction column (20) for extracting a DAO stream (26)
in a feed stream of heavy hydrocarbons (12) from an asphaltene
stream (24);
a catalytic upgrading reactor (203, 208 or 310) in
communication with an overhead of said first extraction column
(20) for catalytically upgrading said DAO stream (26);
a SHC reactor (120) in communication with a bottoms of said
first extraction column (20) for slurry hydrocracking said
asphaltene stream (24, 52).

17. An apparatus for converting heavy hydrocarbons to lighter
hydrocarbons comprising:
a SHC reactor (120) for slurry hydrocracking a heavy
hydrocarbon stream (186);
a first solvent deasphalting extraction column (70) in
downstream communication with said SHC reactor (120) for
extracting a first DAO stream (82) in a slurry hydrocracked
product stream from an asphaltene stream (84);
a second extraction column (20) in downstream communication
with said first extraction column (70) for further extracting a
second DAO stream (26); and
said SHC reactor (120) in downstream communication with
said second extraction column (20).

Appeal 2013-002261
Application 12/495,543

3
The References
Pevere US 2,973,313 Feb. 28, 1961
Hood US 5,914,010 June 22, 1999
Colyar US 7,279,090 B2 Oct. 9, 2007
Gauthier US 2008/0149543 A1 June 26, 2008
The Rejections
The claims stand rejected as follows:
1. Claims 1, 2, and 9 are rejected under 35 U.S.C. § 102(b) as
anticipated by Pevere;
2. Claims 3 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pevere, as applied to claim 1, and further in view of
Gauthier;
3. Claims 4–7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Pevere, as applied to claims 1 and 2, and further in view of
Hood;
4. claims 10 and 14–16 are rejected under 35 U.S.C. § 103 as
unpatentable over Pevere in view of Gauthier, as applied to claims 8,
11, and 12, and further in view of Hood;
5. Claims 11–13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pevere in view of Gauthier; and
6. Claims 17–20 are rejected under 35 U.S.C. § 102(b) as anticipated
by Colyar.

Appeal 2013-002261
Application 12/495,543

4
OPINION
We affirm the rejections under 35 U.S.C. §§ 102(b) and 103(a).
Rejection of claims 1, 2, and 9 under 35 U.S.C. § 102(b) and
claims 3–8, 10, and 14–16 under 35 U.S.C. § 103(a)
Appellants argue only independent claim 1 and do not present any
separate arguments for the patentability of dependent claims 2 or 9.
We therefore limit our discussion to claim 1. Claims 2 and 9 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255–56 (Fed. Cir. 1989).
Claim 1 recites an “apparatus for converting heavy hydrocarbons to
lighter hydrocarbons” and uses functional language. Structural claims, such
as claims directed to an apparatus, must be distinguished from the prior art
in terms of structure rather than function. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) and cases cited therein; In re Danly, 263 F.2d
844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315–16 (CCPA
1948).
“[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.” In re
Swinehart, 439 F.2d 210, 212–13 (CCPA 1971). Choosing to define an
element functionally, i.e., by what it does, carries with it a risk: where there
is reason to conclude that the structure of the prior art is inherently capable
of performing the claimed function, the burden shifts to the applicant to
show that the claimed function patentably distinguishes the claimed structure
Appeal 2013-002261
Application 12/495,543

5
from the prior art structure. See Schreiber, 128 F.3d at 1478; In re Hallman,
655 F.2d 212, 215 (CCPA 1981).
Appellants argue the Examiner’s rejection does not meet the initial
burden of pointing out that Pevere discloses the SHC reactor as claimed.
App. Br. 6–7. Appellants’ argument is not well taken, as the Examiner
detailed such disclosure in the Final Office Action. Specifically, the
Examiner pointed out that Pevere discloses a hydrocracking reactor (24) that
can be employed to carry out slurry hydrocracking as called for in claim 1.
Final Office Action 2, 10–11. The Examiner’s findings in this regard are
based upon sound technical reasoning. The burden therefore shifted to
Appellants to show that the claimed SHC reactor is patentably distinct from
the Pevere hydrocracking reactor.
Appellants have not carried that burden. Appellants argue that the
SHC reactor is patentably distinct because Pevere’s hydrocracking reactor is
a fixed-bed reactor, as opposed to a slurry reactor. App. Br. 7–9.
Appellants’ argument is not persuasive. Appellants’ Specification describes
a slurry as a liquid feedstock mixed with hydrogen and solid catalyst
particles. Spec. ¶ 4. The Specification states the SHC reactor is able to
“take the form of a three-phase, e.g., solid-liquid-gas, reactor . . . through
which catalyst, hydrogen and oil feed are moving,” and that “[m]any other
mixing and pumping arrangements may be suitable to deliver the feed,
hydrogen and catalyst to the [SHC] reactor.” Spec. ¶ 31.
Pevere is not limited to a fixed-bed reactor. Pevere provides that its
hydrocracking can be conducted in any hydrocracking reactor, as long as the
reactor includes a nickel tungsten sulfide catalyst and is capable of
withstanding certain temperature and pressure conditions. Pevere 2:39–42;
Appeal 2013-002261
Application 12/495,543

6
4:4–14, 64–68. Thus, the catalyst in the hydrocracking reactor of Pevere can
be provided in any suitable form, including solid catalyst particles suspended
in liquid hydrocarbons, i.e., a slurry.
Appellants argue that Pevere discloses a conventional hydrocracking
reactor, which is structurally distinct from a SHC reactor. App. Br. at 9–11.
Appellants provide no supporting evidence, but instead rely on elements that
are not recited in claim 1 and attorney argument to supplant facts.
Appellants’ attorney argument cannot take the place of evidence. See In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Accordingly, we affirm the
rejection of Claims 1, 2, and 9 under 35 U.S.C. § 102(b).
Appellants rely on the same arguments made in support of
patentability of independent claim 1 to support the patentability of
dependent claims 3–8, 10, and 14–16. App. Br. 11. For the same reasons
expressed in connection with claim 1, Appellants’ arguments fail to show
reversible error in the Examiner’s rejections. Accordingly, we also affirm
the rejection of Claims 3–8, 10, and 14–16 under 35 U.S.C. § 103(a).
Rejection of claims 11–13 under 35 U.S.C. § 103(a)
Appellants argue only independent claim 11 and do not present any
separate arguments for the patentability of dependent claims 12 and 13.
We therefore limit our discussion to claim 11, and claims 12 and 13 stand or
fall with claim 11.
The Examiner finds Pevere discloses all of the elements of claim 11
except a second extraction column in downstream communication with the
SHC reactor. Ans. 4–5.
Gauthier discloses a method for converting heavy hydrocarbons to
lighter hydrocarbons utilizing a first SDA column and a second SDA column
Appeal 2013-002261
Application 12/495,543

7
arranged in a series for two successive stages of SDA. Gauthier ¶¶ 1, 10.
The second SDA column of Gauthier is in downstream communication with
the SHC reactor. Id. Fig. 1.
Appellants argue that the aim of Gauthier would not motivate the
skilled artisan to combine Pevere with Gauthier to arrive at Appellants’
claimed invention. App. Br. 16–17. Gauthier and Pevere, however, have
the same general aim: maximizing the conversion of heavy hydrocarbons to
lighter hydrocarbons. Gauthier ¶ 15; Pevere 1:38–40. Accordingly, we
agree with the Examiner that a skilled artisan would have recognized that it
is advantageous to use Gauthier’s two serial SDA columns with the
apparatus of Pevere in order to maximize the conversion of heavy
hydrocarbons to lighter hydrocarbons for subsequent processing. Ans. 5.
Appellants argue that Pevere’s teachings would not have motivated a
skilled artisan to modify Pevere because Pevere already provides a solution.
App. Br. 17–18. “[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellants argue that Gauthier’s reason for using two SDA columns
in series—to make improved fluid catalytic cracking (FCC) feed—does not
apply to Pevere. App. Br. 18. According to Appellants, a skilled artisan
would not have been motivated to subject Pevere’s deasphalted oil to a
second SDA column because Pevere does not make FCC feed. Id.
Appellants’ claimed invention, however, is directed to an apparatus, not a
process for making a specific feed. Further, we agree with the Examiner that
a skilled artisan would have found it advantageous to modify Pevere to
Appeal 2013-002261
Application 12/495,543

8
utilize Gauthier’s two serial SDA columns to provide an improved FCC feed
in an operation where FCC feed is desired. See Ans. 14–15. Accordingly,
we affirm the rejection of claims 11–13 under 35 U.S.C. § 103(a).
Rejection of claims 17–20 under 35 U.S.C. § 102(b)
Appellants argue only independent claim 17 and do not present any
separate arguments for the patentability of dependent claims 18–20.
We therefore limit our discussion to claim 17, and claims 18–20 stand or fall
with claim 17.
Claim 17, like claim 1, is directed to an “apparatus for converting
heavy hydrocarbons to lighter hydrocarbons.” Thus, Appellants must
distinguish claim 17 from the prior art in terms of structure rather than
function.
Appellants argue that the Final Office Action failed to identify a first
deasphalting extraction column downstream of a SHC in Colyar. App. Br.
12–13. We are not persuaded. The Final Office Action states that Colyar
“discloses an apparatus for converting heavy hydrocarbons to lighter
hydrocarbons comprising: . . . a first extraction column (22) in downstream
communication with the SHC reactor (14) for extracting a first DAO stream
(23) in a slurry hydrocracked product stream (21) from an asphaltene stream
(13) . . . .” Final Office Action 3 (citing Colyar Fig. 1). The Examiner
found that the stripper column (22) of Colyar, when supplied with a solvent,
is capable of serving as a first extraction column to perform the function of
claim 17. Id. 11. The Examiner’s findings are based upon sound technical
reasoning. Thus, Appellants must show that the structure of the claimed first
SDA extraction column is patentably distinct from Colyar’s stripper.
Appeal 2013-002261
Application 12/495,543

9
Appellants have failed to carry that burden. Appellants argue that
Colyar’s stripper is not a SDA extraction column because no solvent is used
in the stripper to dissolve oil and extract the dissolved oil from an asphalt
stream. App. Br. 13. This argument is not well taken because it attempts to
distinguish Colyar’s stripper in terms of its function, not its structure.
Appellants argue that a steam stripper is not capable of acting as a
SDA extraction column because a SDA extraction column has a liquid
distributor for distributing solvent, whereas a steam stripper has a gas
distributor for distributing steam. App. Br. 13–15. Appellants’ argument in
this regard is not based on any facts and, as noted above, cannot take the
place of evidence.
Appellants argue that the Examiner has used hindsight analysis and
cited no suggestion from a reference for supplying a solvent instead of steam
to Colyar’s stripper. App. Br. 14. “The anticipation analysis asks solely
whether the prior art reference discloses and enables the claimed invention,
and not how the prior art characterizes that disclosure or whether alternatives
are also disclosed.” Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d
1314, 1324 n.6 (Fed. Cir. 2003).
Appellants argue that a SDA extraction column as claimed requires
additional downstream equipment to separate the solvent from the
deasphalted oil that is not included in Colyar. App. Br. 15. Appellants’
argument is misplaced, as the missing features upon which Appellants rely
are not recited in claim 17. Accordingly, we affirm the rejection of claims
17–20 under 35 U.S.C. § 102(b).

Appeal 2013-002261
Application 12/495,543

10
DECISION/ORDER
The Examiner’s rejections of claims 1–20 before us on appeal are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc