Ex Parte Cullen

Board of Patent Appeals and Interferences

Jun 28, 2012

11096779 (B.P.A.I. Jun. 28, 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.
11/096,779 04/01/2005 Mark Cullen CULLN-001G 3920
7663 7590 06/28/2012
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
NGUYEN, TAM M
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
06/28/2012 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 MARK CULLEN
____________

Appeal 2011-005016
Application 11/096,779
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005016
Application 11/096,779

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-7, 9-20, 27-34, 49, 51, 52, and 61 under 35 U.S.C.
§ 103(a) as unpatentable over Sorgenti (US 3,816,301 issued June 11, 1974)
in view of Gunnerman (US 6,500,219 B1 issued Dec. 31, 2002) or Yen
(US 6,402,939 B1 issued June 11, 2002). We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.

Appellant claims a process for reducing levels of nitrogen-bearing
compounds in a crude oil fraction comprising exposing the crude oil fraction
to sonic energy in the presence of an oxidizing agent to oxidize the nitrogen-
bearing compounds, separating the oxidized nitrogen-bearing compounds
from the crude oil fraction, and contacting this crude oil fraction with
hydrogen gas to reduce nitrogen-bearing compounds remaining in the crude
oil fraction by hydrodenitrogenation (independent claims 1 and 61).
Representative claim 1 reads as follows:
1. A process for treating a crude oil fraction to reduce
levels therein of nitrogen-bearing compounds, said process
comprising:
(a) exposing said crude oil fraction to sonic energy in the
presence of an oxidizing agent, said sonic energy possessing
sufficient magnitude to oxidize a majority of said nitrogen-
bearing compounds present in said crude oil fraction;
(b) separating at least a portion of said oxidized nitrogen-
bearing compounds produced in step (a) from said crude oil
fraction; and
(c) after step (b), contacting said crude oil fraction
exposed to sonic energy in step (a) with hydrogen gas under
Appeal 2011-005016
Application 11/096,779

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conditions causing reduction of nitrogen-bearing compounds
remaining in said crude oil fraction by hydrodenitrogenation.
It is the Examiner's fundamental position that Appellant's claimed
process of reducing nitrogen-bearing compounds would have occurred
inherently during practice of Sorgenti's process of reducing sulfur-bearing
compounds when modified to include use of sonic energy to promote the
oxidation step as taught by Gunnerman or Yen (Ans. 4-6).
Appellant does not argue with any reasonable specificity that the
Examiner has failed to establish a prima facie case of
inherency/obviousness. In any event, a prima facie case has been
established for the reasons expressed in the Answer and in the prior Board
Decisions for related Appeals 2010-003805 (application 10/411,796) and
2007-002486 (application 10/429,369).
As support for nonobviousness, Appellant argues that unexpectedly
good results have been shown by the First and Second Declarations of
record under 37 C.F.R. § 1.132 (Br. 16).1
The evidence identified by Appellant in these Declarations includes
Appendices A and B in the First Declaration and Appendix C in the Second
Declaration (id.). However, the evidence in these Appendices relates to

1 Appellant states that the Examiner improperly compares the results shown
in these Declarations to the Sorgenti process as modified by Gunnerman or
Yen (Br. 14-15). From our perspective, however, the Examiner's discussion
of these results in comparison with the teachings of Sorgenti and Gunnerman
or Yen relates to whether these teachings would have led one of ordinary
skill in this art to expect, rather than not expect, the results shown in
Appellant's Declarations.
Appeal 2011-005016
Application 11/096,779

4
reducing levels of sulfur-bearing compounds and therefore is not relevant to
the claimed process for reducing levels of nitrogen-bearing compounds.
The only identified evidence in these Declarations which relates to
reducing levels of nitrogen-bearing compounds constitutes the evidence
shown in Appendices A and B of the Second Declaration. As correctly
indicated by the Examiner, this evidence is not commensurate in scope with
the claims (Ans. 8), and Appellant does not contend otherwise in the appeal
record. Furthermore, this evidence does not include a comparison with the
closest prior art (e.g., a comparison of the nitrogen-reduction achieved by
the claimed process with the nitrogen-reduction inherently achieved by the
unmodified Sorgenti process) such that it is not possible to assess whether
the results shown by this evidence are actually different and unexpected.
Appellant points out that Sorgenti, Gunnerman and Yen are directed
to sulfur-reduction and therefore do not teach or suggest the unexpectedly
good nitrogen-reduction results said to be shown in the Declarations (Br.
17). Appellant reinforces this point by emphasizing that the oxidative
processes of Gunnerman and Yen are taught to be selective for sulfur-
bearing compounds with no apparent effect on non-sulfur components (id.).
Appellant summarizes by stating that "neither Sorgenti, Gunnerman, nor
Yen teach or suggest the beneficial effects in the reduction in levels of
nitrogen-bearing compounds that are achieved with the method according to
the instantly claimed invention" (id.).
There are a number of deficiencies in Appellant's position. As
explained above, the proffered evidence fails to show nitrogen-reduction
results which are unexpected compared to the closest prior art and which are
commensurate in scope with the claims. As also explained above, the
Appeal 2011-005016
Application 11/096,779

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Examiner's rejection is based on a theory of inherency rather than an express
teaching of nitrogen-reduction.
Under these circumstances, our assessment of the argument and
evidence for and against obviousness leads us to determine that substantial
evidence supports an ultimate conclusion of obviousness. We sustain,
therefore, the § 103 rejection of all claims as unpatentable over Sorgenti in
view of Gunnerman or Yen.

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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