Ex Parte Bhan

Board of Patent Appeals and Interferences

May 29, 2012

11399843 (B.P.A.I. May. 29, 2012)

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.
11/399,843 04/07/2006 Opinder Kishan Bhan TH2883 (US) 1527
23632 7590 05/29/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
05/29/2012 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 OPINDER KISHAN BHAN
____________________

Appeal 2010-009806
Application 11/399,843
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, CHUNG K. PAK and
TERRY J. OWENS, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009806
Application 11/399,843

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Opinder Kishan Bhan (Applicant) appeals an Examiner’s decisions rejecting
claims 1-22. 35 U.S.C. §§ 6(b) and 134(a). Because we do not perceive error in
the Examiner’s decisions that the subject matter of claims 1-15 was anticipated and
that the subject matter of claims 1-22 would have been obvious, we affirm.
The Claimed Subject Matter
The claimed subject matter is directed to a method for catalytically treating a
crude oil to obtain an oil product having decreased micro-carbon residue (MCR).1
The method has two basic steps: (1) contacting crude oil with a catalyst and (2)
controlling the catalyst contact conditions to reduce the MCR content to no more
than 90% of the crude MCR content.
Exemplary Claim
1. A method of producing a crude product, comprising:
contacting a crude feed with one or more catalysts to
produce a total product that includes the crude product, wherein
the crude product is a liquid mixture at 25 °C and 0.101 MPa,
the crude feed has a micro-carbon residue (MCR) content of at
least 0.0001 grams per gram of crude feed, and at least one of
the catalysts is a Columns 6-10 metal catalyst that has, per gram
of catalyst, at least 0.3 grams of one or more metals from
Columns 6-10 of the Periodic Table and/or one or more
compounds of one or more metals from Columns 6-10 of the
Periodic Table; and a binder; and
controlling contacting conditions such that the crude
product has a MCR content of at most 90% of the MCR content
of the crude feed, wherein MCR content is as determined by
ASTM Method D4530.

1 The Examiner and Applicant also refer to CCR (Conradson Carbon Residue) and
RCR (Ramsbottom Carbon Residue). The three designations have been treated
during prosecution as alternative designations for the same oil component. We
treat them as the same for the purpose of this opinion. For consistency, when
quoting from the record, MCR will be substituted for CCR, RCR, “Conradson
Carbon Residue” and “Ramsbottom Carbon Residue.”
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Application 11/399,843

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App. Br. 11, Claims Appendix (emphasis added).
Rejections on Appeal
Applicant appeals the following rejections:
1. Claims 1-15 under 35 U.S.C. § 102(b) as anticipated by or,
alternatively, under 35 U.S.C. § 103(a) as obvious over Harle;2
2. Claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Harle;
3. Claims 18-20 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Harle and Simpson;3 and
4. Claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Harle and Eng.4
OPINION
We have reviewed these rejections in light of Applicant’s arguments. We do
not see error in the Examiner’s decision that claims 1-22 are unpatentable.
Claim 1
Anticipation
The Examiner found that Harle expressly teaches the claimed method except
for the requirement related to the reduction of MCR content. Ans. 4. The
Examiner further found that the reduction of MCR was inherent in Harle’s method.
Id. The Examiner relied on Wilson5 as evidence supporting the inherency finding.
Id. Specifically, the Examiner relies on Wilson at column 3, lines 10-13
(bracketed material added): “Hydrodenitrogenating in accordance with the present
invention results not only in substantial nitrogen removal, but also results in

2 US Patent 6,203,695 B1 issued Mar. 20, 2001.
3 US Patent 4,460,707 issued July 17, 1984.
4 US Patent 3,617,501 issued Nov. 2, 1971.
5 U.S. Patent 5,089,462 issued Feb. 18, 1992.
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Application 11/399,843

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substantial [MCR] reduction of the feedstock, and sulfur removal.” The Examiner
reasoned that
it is known to those skilled in the art that [MCR] will
necessarily reduce during [the] hydrotreating process
(evidenced by Wilson et al: US Patent 5,089,462; column 3,
lines 10-13). Since [the] Harle invention achieves
[hydrodesulfurization] and [hydrodemetallization] up to 68
wt% and 78 wt% (See Table, column 14, lines 41-49), it is
expected that the invention will also necessarily achieve
reduction in [MCR] in the same range.
Ans. 4, last full paragraph (bracketed material added).
Applicant challenges the Examiner’s inherency finding arguing that it would
not be expected that “all hydrotreating processes would necessarily reduce MCR.”
App. Br. 7 (emphasis added, original emphasis omitted). Applicant relies on a
portion of Brons6 as evidentiary support. Id. at 7-8. Brons is said to show that in
some processes for treating oils, MCR will increase rather than decrease:
[S]ignificant conversion of these heavy oils to lighter materials
is evidenced by observed reductions in average molecular
weight, MCR contents, 975º F. and higher boiling fractions,
asphaltene contents, density, and viscosity. Whereas, treatments
without sodium hydroxide present generate more gas and solids
formation (less oil) and increase overall MCR values.
Brons 4:14-21.
The Examiner responds that Brons is not relevant either to the claimed
process or the process described by Harle. In the Examiner’s view, the claimed
process, Harle and Wilson are substantially similar hydrotreating processes while
Brons is directed to a different process. Ans. 12, 3rd paragraph.
We agree with Examiner’s conclusion on the relevance of Brons. We need
go no further than to note that Applicant’s claimed method, and the methods

6 U.S. Patent 5,635,056 issued June 3, 1997.
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Application 11/399,843

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described by Harle and Wilson, relate to non-aqueous, catalytic processes while
Brons is an aqueous, non-catalytic process. Compare Brons 2:20-41, with Harle
Example 11, Wilson Example 7 and Applicant’s Example 2. We fail to see how
Brons adds anything of significance to the inherency determination.
Whether a feature is inherent is a question of fact. Finnigan Corp. v. Int’l
Trade Comm’n, 180 F.3d 1354, 1362 (Fed. Cir. 1999). Facts must be proved by a
preponderance of the evidence. See Falko-Gunter Falkner v. Inglis, 448 F.3d
1357, 1362 (Fed. Cir. 2006); Kubota v. Shibuya, 999 F.2d 517, 520 n.2 (Fed. Cir.
1993). We think the similarity in catalysts and hydrotreating conditions described
by Harle and Wilson and by Applicant establish, by a preponderance of the
evidence, that a reduction in MCR will necessarily be achieved in the process
described by Harle.7 The Examiner has made out a prima facie case that a
reduction in MCR would be inherent in Harle’s disclosed method.
In this regard we note there are a number of different properties that may be
effected by catalytic treatment of crude oil. See Written Description 48, Table 1.
Typically, as is the case here, only a subset of the effected properties is identified
in claiming the invention. Where the properties said to be achieved by the process
rather than the process conditions (e.g. time, temperature, pressure, specific or
catalyst composition, structure or support) are asserted to distinguish the claimed
process from the prior art process, it is appropriate to place the burden on the
Applicant to establish that the prior art process does not achieve the results

7 In this regard we note that the claims specify a resulting MCR of no more than
90% of the value of the crude oil feed. Applicant has not argued the degree of
reduction in MCR as distinguishing the claimed subject matter from the prior art.
Applicant only challenges the Examiner’s finding that a reduction in MCR is
inherent in Harle’s method: “[T]he Examiner’s contention that one of ordinary skill
in the art would recognize that hydrotreating processes inherently reduce MCR
content of a hydrocarbon feed is not reasonable, and does not support rejection of
claim 1 and its dependent claims 2-15 under §102(b).” App. Br. 8.
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claimed. The placement of the burden is appropriate because of the ex parte nature
of the application process and because the PTO does not have the ability to
perform tests to compare the results of prior art processes with the claimed process.
See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Best, 562 F.2d 1252,
1255 (CCPA 1977).
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b).
Obviousness
Relying on essentially the same rational used for finding inherency, the
Examiner concluded that it would have been expected and obvious that Harle’s
process would reduce MCR. Ans. 4-5. Applicant argues that Harle does not teach
or suggest reducing the MCR content of a crude feed, again countering the
Examiner’s reliance on Wilson with Brons. App. Br. 8.
We do not see error in the Examiner’s conclusion that the decrease in MCR
would have been expected and obvious. The hypothetical person of ordinary skill
in the art is presumed to have knowledge of the entire relevant prior art. Standard
Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). The Wilson
reference demonstrates knowledge possessed by that hypothetical person. It was
reasonable for the Examiner to conclude, in light of the level of skill in the art as
shown by Wilson, that the person of ordinary skill would have expected that the
MCR would have been reduced by Harle’s process. Applicant’s argument relying
on the Brons reference is equally unpersuasive with respect to obviousness.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a).
Claims 2-22
Claims 2-17 depend directly or indirectly from claim 1. Applicant relies on
the same arguments made with respect to claim 1—that Harle does not describe or
suggest lowering the MCR content. App. Br. 8-9. Since Applicant has not
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Application 11/399,843

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presented any additional arguments for patentability as to these claims, we affirm
the rejection of claims 2-15 under § 102(b) and 2-17 under § 103(a) for the reasons
we stated with respect to claim 1. 37 CFR § 41.67(c)(1)(vii).
Claims 18-22 also depend directly or indirectly from claim 1. The Examiner
additionally relied on the Simpson and Eng references to reject claims 18-20 and
21-22, respectively. Applicant does not challenge Examiner’s findings or holdings
based upon those references, relying instead on the patentability of claim 1. App.
Br. 9. We affirm the rejections of claims 18-22 under 35 U.S.C. § 103(a) for the
reasons stated with respect to claim 1. 37 CFR § 41.67(c)(1)(vii).
DECISION
The Examiner’s decisions rejecting the subject matter of claims 1-22
under 35 USC §§ 102(b) and 103(a) are affirmed.
AFFIRMED

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