Ex Parte CullenDownload PDFBoard of Patent Appeals and InterferencesJun 28, 201211096779 (B.P.A.I. Jun. 28, 2012) Copy Citation 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 3 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 5 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 bar Copy with citationCopy as parenthetical citation