Applied Research Associates, Inc.

Patent Trials and Appeals Board

Mar 18, 2021

2020001113 (P.T.A.B. Mar. 18, 2021)

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.
14/060,225 10/22/2013 Edward N. Coppola 6999-133251 7481
28289 7590 03/18/2021
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
STEIN, MICHELLE
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/18/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD N. COPPOLA, CHARLES RED JR.,
and SANJAY NANA

Appeal 2020-001113
Application 14/060,225
Technology Center 1700
Before ERIC B. GRIMES, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12, 14, 16–20, and 26–37. Final Act.
1. We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/060,225 filed Oct. 22, 2013 (“the ’225 App.”); the Final Office Action
dated Mar. 14, 2019 (“Final Act.”); the Appeal Brief filed Sept. 26 2019
(“Appeal Br.”); the Examiner’s Answer dated Oct. 21, 2019 (“Ans.”); and
the Reply Brief filed Nov. 25, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Applied Research Associates, Inc. as
the real party in interest. Appeal Br. 3.
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2
STATEMENT OF THE CASE
The subject matter of the pending application relates to high-rate
thermal reactor systems for converting an organic feedstock into an
upgraded fuel product. Spec. ¶ 2.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A process for upgrading an organic feedstock
comprising:
providing an organic feedstock and water mixture;
feeding the mixture into a reactor operating at a Reynolds
Number of at least 2000, wherein the mixture is subjected to heat and
pressure at supercritical water conditions;
maintaining the heat and pressure applied to the mixture in the
reactor for a superficial residence time of less than three minutes to
cause the organic components of the mixture to undergo a reaction
resulting in the formation of upgraded hydrocarbon distillate products;
and
recovering the upgraded hydrocarbon distillate products.
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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Green US 4,135,982 Jan. 23, 1979
Vavruska US 5,611,947 Mar. 18, 1997
Weerstra US 5,760,297 June 2, 1998
Makino et el.
(“Makino”)
US 5,843,386 Dec. 1, 1998
Tullio et al. (“Tullio”) US 2002/0173682 A1 Nov. 21, 2002
He et al. (“He”) US 2008/0099374 A1 May 1, 2008
Allam US 2009/0206006 A1 Aug. 20, 2009
Babicki et al.
(“Babicki”)
US 2010/0228062 A1 Sept. 9, 2010

REJECTIONS3
The Examiner rejects claims under 35 U.S.C. § 103(a) as follows:
I. Claims 1–5, 7, 8, 11, 12, 14, 18, 20, 26–31, and 37 over He as
evidenced by Green4;
II. Claim 6 over He as evidenced by Green, and further in view of
Babicki or alternatively, Makino;
III. Claim 9 over He as evidenced by Green, and further in view of
Vavruska;
IV. Claim 10 over He as evidenced by Green, and further in view of
Allam;

3 In the Final Office Action the Examiner rejects claims 34 and 35 under
35 U.S.C. § 112(a) and claims 29–35 under § 112(b). Final Act. 4–5. These
rejections are not identified as asserted against the pending claims in the
Answer, therefore we do not address them in the Decision.
4 The rejection includes claims 13 and 15 that are cancelled. Final Act. 3.
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V. Claims 16, 17, and 32–34 over He as evidenced by Green, and
further in view of Tullio;
VI. Claim 19 over He as evidenced by Green, and further in view of
Makino and Weerstra; and
VII. Claims 35 and 36 over He as evidenced by Green, further in
view of Babicki or alternatively, Makino, and further in view of Vavruska.
Final Act. 3–8.
OPINION
I. Rejection of claims 1–5, 7, 8, 11, 12, 14, 18, 20, 26–31, and 37 as
obvious over He as evidenced by Green
Regarding independent claims 1, 8, 30, and 37, the Examiner finds
that He teaches the claim limitations except explicitly disclosing a Reynolds
Number of at least 2000. Final Act. 3. The Examiner finds that He teaches
turbulent flow, citing claim 7 of He. Id. The Examiner relies on Green as
evidence that turbulent flow has a Reynolds Number of at least 2000. Id.
(citing Green col. 2, ll. 36–45).
Appellant argues claims 1, 3–5, 7, 8, 11, 18, 20, 26–28, and 30 as a
group. Appeal Br. 15–22. We select claim 1 as representative of the group.
See 37 C.F.R. § 41.37(c)(1)(iv). Claims 3–5, 7, 8, 11, 18, 20, 26–28, and 30
stand or fall with claim 1. We separately address the claims in this rejection
that Appellant argues are patentable for additional reasons (claims 12 and
37, claims 14 and 31, and claims 2 and 29).
A. Claims 1, 3–5, 7, 8, 11, 18, 20, 26–28, and 30
With respect to claim 1, Appellant argues that one of ordinary skill in
the art at the time of the invention would not have modified He with Green
to operate the reactor at a turbulent flow having a Reynolds Number of at
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least 2000, as such a modification would render He’s process unsatisfactory
for its intended purpose, would change the principle of operation, and would
not have a reasonable expectation of success. Appeal Br. 16.
Appellant’s argument is unpersuasive because the Examiner does not
propose modifying He with teaching from Green. Rather, the Examiner
relies on Green merely as evidence that a “turbulent” flow has a Reynolds
Number of at least 2000. See Final Act. 3. Under the Examiner’s rejection,
He does not require modification, but merely additional explanation.
Appellant argues that He does not disclose a reactor at true turbulent
flow having a Reynolds Number of at least 2000. Appeal Br. 17. In
support, Appellant cites and discusses the Kent Declaration (Declaration of
Robert E. Kent signed Aug. 13, 2018 (“Kent Decl.”)) and the Coppola
Declaration (Declaration of Edward N. Coppola signed Jan. 7, 2019
(“Coppola Decl.”)).
In the Kent Declaration, Reynolds Numbers were calculated based on
the average preferred reactor temperature, preferred reactor pressure, and
preferred reactor residence time in He’s Example 1. Kent Decl. ¶ 12; He
¶ 75. In He’s Example 1, preferred oil/water volume ratios are “on the order
of 1:3.” He ¶ 75. Kent states that the Reynolds Number calculations were
“based on the properties of supercritical water” because water dominates the
mass transport properties with an oil-to-water ratio of 1:3. Kent Decl. ¶ 12.
Kent calculated Reynolds Numbers for a 0.25-inch outer diameter tube and a
0.5-inch outer diameter tube with a reactor length to diameter ratio (L/D) of
50 or 4000. Id. ¶ 13. Based on these parameters, Kent calculated the
Reynolds Numbers to be between 3 and 1415. Based on the calculations,
Kent states his opinion that “He, with or without Green, only discloses non-
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turbulent flow reactor operation and would not suggest to one skilled in the
art to feed a reaction mixture into a reactor operating at a Reynolds number
of at least 2000.” Id. ¶ 14.
The Kent Declaration and Appellant’s arguments related to it are
unpersuasive of reversible error by the Examiner in rejecting claim 1 as
obvious over He as evidenced by Green. The Kent Declaration limits the
parameters used for the calculations to only those in He’s Example 1, and
does not take into account the significantly broader disclosures of He. See
Kent Decl. ¶ 12. For example, Kent uses 387°C (average of 374°C and
400°C) as the reactor temperature, but He discloses 374°C to 1000°C.
Compare Kent Decl. ¶ 12 with He ¶ 43. Kent uses a reactor pressure of
3600 psig (average of 3200 and 4000), but He discloses 3205 to 10,000 psia.
Compare Kent Decl. ¶ 12 with He ¶ 43. Kent uses a reactor residence time
of 30 minutes (average of 20 and 40 minutes), but He discloses one minute
to six hours. Compare Kent Decl. ¶ 12 with He ¶ 44. Kent prepares
calculations for L/D values of 50 and 4000, but He discloses a range of 50 to
10,000. Compare Kent Decl. ¶ 13 with He ¶ 54.
Thus, the Kent Declaration limits its analysis to the mass transport
properties of supercritical water and preferred reactor parameters in He’s
Example 1. However, “[a] reference must be considered for everything that
it teaches, not simply the described invention or a preferred embodiment.”
In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); see also
Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989)
(“the fact that a specific embodiment is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.”). Moreover, a reference stands for all of
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the specific teachings thereof as well as the inferences one of ordinary skill
in the art would have reasonably been expected to draw therefrom. See In re
Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). The Kent Declaration is
insufficient evidence to overcome the rejection.
The Non-Final Office Action dated September 5, 2018, indicates that
the Kent Declaration does not provide sufficient evidence of the Reynolds
Numbers to be obtained from He, since He is not limited to the examples.
Non-Final Act. 9. In response, Applicant submitted the Coppola
Declaration. Coppola Decl. ¶¶ 7–8. However, the Coppola Declaration
does not address adequately the Examiner’s complaint. The Coppola
Declaration does not provide the results of calculations of Reynolds
Numbers for reactors having, e.g., L/D ratios greater than 4000, but less than
or equal to 10,000. See generally, id.; see also He ¶ 54. Nor does the
Coppola Declaration consider reactors having temperature and/or pressure
covering the full range of He’s disclosure. Instead, the Coppola Declaration
calculates L/D ratios for reactors having reactor diameters of 0.25, 0.5, 0.75,
1, and 2 inches based on “known” reactor parameters, which in turn are
based on Re 2000 and residence time of either one minute or 360 minutes.
Id. ¶¶ 11, 12, and 14.
Indeed, calculations in the Coppola Declaration demonstrate that, for
a Reynolds Number of 2000, L/D ratios within those disclosed by He are
obtained with a reactor having a 0.25 inch or 0.5 inch tube when t=1 minute,
and for a reactor having a 2 inch tube when t=360 minutes. Coppola Decl.
¶¶ 12, 14. In the face of these results, Coppola states that operation of a 0.25
inch or 0.5 inch diameter tubular reactor at t=1 minute “would be
impractical given the extremely low throughput (0.01–0.03 gallons per
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minute) over a 6–14 foot long tube, which are far outside suitable design
parameters as recognized by one of skill in the art of chemical engineering.”
Id. ¶ 13. And for t=360 minutes, Coppola states that the reactor lengths
(specified by the declarant) are “unrealistically long” and the volumetric
flow rates are even more unrealistic and “inconsistent with a properly
designed system where throughout is an important parameter.” Id. ¶ 15.
Coppola concludes that the He reactor operated at a residence time of either
one minute or 360 minutes “cannot be properly operated at turbulent flow
(Re 2000).” Id. ¶¶ 13, 15.
However, according to the Appeal Brief, “[t]ubular reactors
representative of pilot systems actually tested in the present invention were
selected to provide basis for the calculations.” Appeal Br. 17 (emphasis
added). Appellant does not explain how “pilot systems actually tested” are
impractical, unrealistically long, or inconsistent with a properly designed
system. Moreover, claim 1 requires neither these attributes, nor any specific
throughput. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of
[Appellant’s] arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”).
We sustain the rejection of claim 1 as obvious over He as evidenced
by Green. Claims 1, 3–5, 7, 8, 11, 18, 20, 26–28, and 30 are argued as a
group, therefore we also sustain the rejection of claims 3–5, 7, 8, 11, 18, 20,
26–28, and 30.
B. Claims 12 and 37
Claim 12 depends from claim 1, and recites, “wherein the superficial
residence time is 1–120 seconds.” Appeal Br. 35 (Claims App.).
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The Examiner finds that He teaches residence times including one
minute, which reads on the claimed range of 1–120 seconds. Final Act. 4.
Appellant contends, “He is operated at a minimum actual residence
time of 1 minute (over 4 minutes superficial residence time) which far
exceeds the claimed superficial residence time of the present invention of 1–
120 seconds (i.e., 0.25–30 seconds actual residence time).” Appeal Br. 22.
Appellant’s argument is unpersuasive. He discloses “residence time”
of one minute to six hours. He ¶ 44. We find nothing in the Specification
that distinguishes between “residence time” and “superficial residence time.”
See generally Spec. It is well settled that arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
We sustain the rejection of claim 12.
Claim 37 depends from claim 1, and recites, “wherein the reactor
maintains a turbulent flow of the mixture at a Reynolds Number of 2000–
100,000.” Appeal Br. 38 (Claims App.).
Appellant contends, “He clearly fails to teach or suggest operating the
reactor at a Reynolds Number within the 2000–100,000 range.” However,
for the reasons discussed in relation to the rejection of claim 1, He meets this
limitation. We sustain the rejection of claim 37 over He as evidenced by
Green.
C. Claims 14 and 31
Claim 14 depends from claim 1, and recites “wherein the feedstock
comprises crude oils exhibiting API gravities greater than 22°; waxy crude
oils comprising yellow wax and/or black wax; and mixtures thereof.”
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Appeal Br. 35 (Claims App.). Claim 31 depends from claim 1, and recites
“wherein the organic feedstock is selected from the group consisting of
petroleum crude oil (API>22), waxy crude oil, atmospheric gas oil (AGO),
vacuum gas oil (VGO); atmospheric tower bottoms (ATB) and vacuum
tower bottoms (VTB) from petroleum crude or waxy crude oils; cycle oil;
straight run naphtha, kerosene, or diesel distillates; and mixtures thereof.”
Id. at 37.
Regarding claims 14 and 31, the Examiner finds that “He teaches
suitable hydrocarbon feeds include bitumen, shale oil, crude oils, heavy
hydrocarbon fractions, vacuum gas oils, resids, etc [0031].” Final Act. 4.
The Examiner finds that the feedstock in the He process is not limited to
those containing asphaltenes. Ans. 9–10.
Appellant argues that heavy oils in He contain asphaltenes that are not
soluble in supercritical water, therefore He’s process forms solids that must
be separated from the products. Appeal Br. 23. Appellant further argues it
is known that turbulent flow alone will not keep all solids in suspension,
especially asphaltenes. Id. Appellant argues, “[t]he present invention is
concerned with the processing of feedstocks that do not contain asphaltenes,
as set forth in claims 14 and 31.” Id. at 24.
Appellant’s arguments are not persuasive. He broadly teaches, “[a]ny
hydrocarbon can be suitably upgraded by a process according to the present
invention. Preferred are heavy hydrocarbons having an API gravity of less
than 20°.” He ¶ 31. He’s disclosure of feedstocks is not limited in the
manner suggested by Appellant.
We sustain the rejection of claims 14 and 31 over He as evidenced by
Green.
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D. Claims 2 and 29
Claim 2 depends from claim 1, and recites “injecting a pressurized
quench stream into the hydrocarbon distillate products such that further
reaction is inhibited and secondary cracking, coking, and gas formation is
minimized; and/or depressurizing the hydrocarbon distillate products.”
Appeal Br. 35 (Claims App.). Claim 29 depends from claim 28, which
depends from claim 27, which depends from independent claim 8. Appeal
Br. 36 (Claims App.). Claim 29 recites “[t]he process of claim 28, including
quenching by injection of a quench stream and/or depressurization of the
product exiting the reactor to terminate conversion reactions and minimize
secondary cracking, coking, and gas formation.” Id.
The Examiner finds that He teaches using water to quench the
reaction to control the temperature. Final Act. 3. Because the quenching
would reduce the temperature, the Examiner finds that it would inherently
inhibit further reaction such as secondary cracking, coking, or gas formation.
Id. at 3, 5. The Examiner finds that Appellant does not distinguish the
quenching process step in the claims over He’s disclosure of quenching.
Ans. 10.
Appellant argues that He teaches quenching to control the reactor
temperature and to bring down the reaction temperature. Appeal Br. 24.
Appellant contends that, in contrast to He, the present invention quenches
“to terminate conversion reactions and minimize secondary cracking,
coking, and gas formation.” Id. Appellant also argues that He fails to teach
rapid depressurization to achieve quenching and to minimize secondary
cracking, coke formation, undesirable secondary reactions, and corrosion.
Id. at 25.
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During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 2 requires injecting
a pressurized quench stream into the hydrocarbon distillate products to
minimize specified reactions and/or depressurizing the products. Appeal Br.
33 (Claims App.). Claim 29 requires quenching by injection and/or
depressurization of the product to minimize the same reactions listed in
claim 2. Id. at 36. The use of and/or means that both claims require
performance of only one of either quenching or depressurizing, although
both quenching and depressurizing may be performed within the scope of
the claims.
Given our construction of the quenching limitation, Appellant’s
assertion that He fails to teach rapid depressurization is not persuasive of
reversible error by the Examiner, as depressurization is not required by
claim 2 or 29 if quenching is performed.
Appellant’s argument that He’s disclosure of quenching does not
“terminate conversion reactions and minimize secondary cracking, coking,
and gas formation” (Appeal Br. 24) is also unpersuasive. He discloses,
“[w]ater molecules, especially under supercritical conditions, can quench
and stabilize hydrocarbon radicals and therefore prevent them from over
cracking and polymerization.” He ¶ 46. Our reviewing court held
[W]here “all process limitations . . . are expressly disclosed by
[the prior art reference], except for the functionally expressed
[limitation at issue],” the PTO can require an applicant “to
prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” In re Best, 562 F.2d
1252, 1254–55 (CCPA 1977) (emphases added) (internal
quotation marks omitted). The court noted that “[w]hether the
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rejection is based on ‘inherency’ under 35 U.S.C. § 102, [or] on
‘prima facie obviousness’ under 35 U.S.C. § 103, . . . the
burden of proof is the same.” Id.
Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1311 (Fed. Cir. 2017).
Appellant’s mere assertion that quenching as disclosed in He differs from
quenching in the claims is insufficient to distinguish claims 2 and 29 from
He. We sustain the rejection of claims 2 and 29 over He as evidenced by
Green.
II. Rejection of claim 6 as obvious over He as evidenced by Green, and
further in view of Babicki or alternatively, Makino
Claim 6 depends from claim 5, which depends from claim 1. Appeal
Br. 34 (Claims App.). Claim 5 recites, “wherein the mixture is heated in the
reactor to a temperature of 400–700°C.” Id. at 33. Claim 6 recites,
“wherein the mixture is heated in the reactor at a rate of 10–50°C/sec.” Id.
at 34.
The Examiner acknowledges that He as evidenced by Green does not
disclose the heating rate, and relies on Babicki or Makino to teach this
limitation. Final Act. 5. The Examiner determines that it would have been
obvious to select the heating rate disclosed by Babicki or Makino “for the
benefit of obtaining the set temperature and to easily control the reaction.”
Id.; Ans. 10.
Appellant argues that one of ordinary skill in the art would not look to
Babicki or Makino when determining a rate of heating within the reactor of
He because the processes taught by Babicki and Makino are very different
from He’s process. Appeal Br. 25. Appellant argues that Babicki is directed
to a fast pyrolysis process using biomass or solid feedstock, adds hydrogen
(rather than water) to the reaction chamber, and is performed at low
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pressure—all different from He. Id. Appellant argues that Makino is
directed to a hydrothermal reaction apparatus in the form of curved piping
including a plurality of reactor units and injects hydrogen gas to restrict
generation of cokes during the reaction process. Id. at 25–26.
Appellant contends that the Examiner fails to address the differences
between the references and He, how the references are relevant to He’s
process, and why one of ordinary skill would reasonably expect that using
the heating rates from different processes would have been successful in He.
We are not persuaded by Appellant’s argument.
Claim 1 requires “the mixture is subjected to heat and pressure at
supercritical water conditions,” thus applying heat at some rate of heating is
necessary. See Appeal Br. 33 (Claims App.). Babicki discloses rates of
heating to temperature ranges that overlap those of claim 4. See Babicki
¶ 45. Makino discloses a desire to increase temperature quickly in order to
instantaneously obtain the set temperature and easily control the reaction.
Makino, col. 12, ll. 11–27. The Examiner’s explanation of the reasons a
person of ordinary skill in the art would have had to combine the prior art
teachings is sufficient when an allowance is made for “the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “As long as some
motivation or suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventors.” In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992). Moreover, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416. The recited
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heating rate is no more than the predictable use of prior art elements
according to their established functions. Id.
We sustain the rejection of claim 6.
III. Rejection of claim 9 as obvious over He as evidenced by Green, and
further in view of Vavruska
Claim 9 depends from claim 1 and recites, “wherein the reactor is
configured to maintain a turbulent flow of the mixture and achieve a
Reynolds Number greater than 10,000.” Appeal Br. 34 (Claims App.).
The Examiner finds that He teaches turbulent flow is required in order
to avoid precipitation. Final Act. 6. The Examiner finds that Vavruska
teaches a similar process in which Reynolds Numbers of up to 30,000 are
used to create turbulent flow and provide intimate mixing of steam and other
reactants. Id. The Examiner determines that it would have been obvious to
select a Reynolds Number such as that disclosed by Vavruska “for the
benefit of creating the turbulent flow required by He, and to provide intimate
mixing of the reactants.” Id.
Appellant argues that Vavruska operates in a steam environment, not
a supercritical water/oil environment. Appeal Br. 27. Appellant also argues
that He mixes in a separate mixer, not in a reactor, and fails to teach mixing
anywhere near true turbulent flow.
As discussed above, He as evidenced by Green discloses turbulent
flow with a Reynolds Number of at least 2000, thus Appellant’s contention
that He “fails to teach mixing anywhere near true turbulent flow” is
unpersuasive of reversible error. Appellant’s assertion that He mixes in a
separate mixer, not in a reactor, does not address the limitations in claim 9.
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Claim 9 recites the reactor is “configured to” maintain a turbulent
flow, which is satisfied by He. The reactor is also “configured to” achieve a
Reynolds Number greater than 10,000, but need not maintain such Reynolds
Number for any specified amount of time. Any achievement of the
Reynolds Number satisfies the claim limitation. The Examiner finds that
Vavruska shows that one of ordinary skill in the art would have a reasonable
expectation of success in obtaining the claimed Reynolds Numbers. Ans.
10. Appellant fails to explain why the Examiner is incorrect, other than to
argue that Vavruska does not operates in supercritical water/oil environment.
We sustain the rejection of claim 9.
IV. Rejection of claim 10 as obvious over He as evidenced by Green, and
further in view of Allam
Claim 10 depends from claim 1 and recites” including adding a
homogeneous catalyst to the water or organic feedstock to enhance or target
specific reactions, and wherein the catalyst is selected from the group
consisting of metal oxides, compounds that form metal oxides, carbonates,
sulfates, and transition metal salts.” Appeal Br. 34 (Claims App.).
The Examiner finds that He teaches catalysts are permissible, and
Allam teaches a similar process for conversion of hydrocarbons with
supercritical water, using carbonate catalysts or metal catalysts. Final Act.
6.
Appellant argues that Allam proposes adding carbonates to facilitate
desulfurization of heavy hydrocarbon feedstock. Appeal Br. 27–28.
Appellant contends that Allam is not at turbulent flow, and is a partial
oxidation process, thus is a completely different process from He. Id. at 28.
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“As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor.”
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). He discloses that use of
added catalysts is permissible, but does not disclose any particular catalyst.
He ¶ 42. One of ordinary skill in the art intending to employ a catalyst
would reasonably investigate references related to conversion of
hydrocarbons—such as Allam—to determine an appropriate catalyst.
We sustain the rejection of claim 10.
V. Rejection of claims 16, 17, and 32–34 as obvious over He as
evidenced by Green, and further in view of Tullio
Claims 16, 17, and 32–34 depend directly or indirectly from claim 1
and recite limitations on the feedstock. Claim 16 recites, “wherein the
feedstock comprises hydrocarbons obtained from Fischer-Tropsch processes,
alkylation processes, oligomerization processes, polymerization processes,
and/or biosynthetic processes.” Appeal Br. 35 (Claims App.). Claim 17
recites “wherein the feedstock comprises renewable plant oil comprising
canola, soy bean, Carinata, and castor; waste vegetable oil; corn oil derived
from distillers grains; animal tallow; algal oil; microbial oil; terpenes and
other pine-related byproducts from tall oils; biosynthetic oils, and mixtures
thereof.” Id. Claim 32 recites “wherein the organic feedstock is selected
from the group consisting of Fischer-Tropsch wax; products of
polymerization, alkylation or oligomerization processes; and waste plastics.”
Id. at 37. Claim 33 recites, “wherein the organic feedstock is a renewable
plant oil.” Id. Claim 34 depends from claim 33, and recites, “wherein the
renewable plant oils comprise virgin plant oils, used cooking oil, yellow
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grease, brown grease, tallow, distillers corn oil, microbial oils and/or tall
oil.” Id.
The Examiner finds that Tullio teaches various feedstocks that include
those of claims 16, 17, and 32–34. Final Act. 7. The Examiner determines
that it would have been obvious to one of ordinary skill in the art to
substitute Tullio’s feeds for those of He, as Tullio teaches that the disclosed
feeds are suitable for a similar process for upgrading heavy oils with water
under supercritical conditions. Id.
Appellant argues that He is concerned with processing heavy
feedstock having high asphaltene contents, thus one of ordinary skill in the
art would not have been motivated to substitute the intermediate refinery
streams of Tullio in He. Appellant also argues that Tullio fails to overcome
the deficiencies of He.
Appellant’s arguments are not persuasive. In an obviousness inquiry,
we consider the prior art for all that it teaches and suggests to the skilled
artisan. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered.”).
He teaches any hydrocarbon can be suitably upgraded, thus is not limited to
asphaltenes, thus the Examiner’s motivation for combining He and Tullio is
acceptable. See Ans. 9. In addition, as discussed above, we do not find He
deficient, and there is no need for Tullio to overcome any asserted
deficiency.
We sustain the rejection of claims 16, 17, and 32–34.
VI. Rejection of claim 19 as obvious over He as evidenced by Green, and
further in view of Makino and Weestra
Appeal 2020-001113
Application 14/060,225

19
Claim 19 depends from claim 1 and recites, “wherein olefinic gas is
produced as a byproduct and the process further comprising converting the
olefinic byproduct gas to high-octane naphtha and/or heavier hydrocarbons
by one of alkylation or oligomerization. Appeal Br. 36 (Claims App.).
The Examiner relies on the findings regarding claim 1 and, in
addition, finds that Makino teaches production of olefins and Weerstra
teaches that refinery byproducts such as olefin gas may be subject to
alkylation in order to obtain high octane products. Final Act. 7.
Appellant argues that neither Makino nor Weerstra overcome the
deficiencies of He. Appeal Br. 29.
At least because we determine that He as evidenced by Green is not
deficient in its teaching, we sustain the rejection of claim 19.
VII. Rejection of claims 35 and 36 as obvious over He as evidenced by
Green, and further in view of Babicki or alternatively, Makino, and
further in view of Vavruska
Claim 35 is independent and includes the limitations of claims 1, 5,
and 6. Appeal Br. 33, 34, and 38 (Claims App.). Claim 36 depends from
claim 35 and recites, “wherein the feedstock is a deasphalted feedstock. Id.
at 38.
The Examiner finds that the claims are obvious over He as evidenced
by Green, further in view of Babicki or Makino, and further in view of
Vavruska. Final Act. 8.
Appellant repeats unpersuasive arguments made in relation to claim 1
(regarding He), claim 6 (regarding Babicki and Makino), and claim 9
(regarding Vavruska). See Appeal Br. 29–30.
We sustain the rejection of claim 35 and 36.
Appeal 2020-001113
Application 14/060,225

20
CONCLUSION
The rejections of claims 1–12, 14, 16–20, and 26–37 under 35 U.S.C.
§ 103 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 8,
11, 12, 14,
18, 20, 26–
31, 37
103(a) He, Green 1–5, 7, 8,
11, 12, 14,
18, 20, 26–
31, 37

6 103(a) He, Green,
Babicki, Makino
6
9 103(a) He, Green,
Vavruska
9
10 103(a) He, Green, Allam 10
16, 17, 32–
34
103(a) He, Green, Tullio 16, 17, 32–
34

19 103(a) He, Green,
Makino, Weestra
19
35, 36 103(a) He, Green,
Babicki, Makino,
Vavruska
35, 36
Overall
Outcome
1–12,14,
16–20, 26–
37

TIME PERIOD FOR RESPONSE
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