Franz, Charlene

Patent Trials and Appeals Board

Aug 6, 2020

13401216 - (D) (P.T.A.B. Aug. 6, 2020)

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.
13/401,216 02/21/2012 James J. Strohm 17088-G 2414
21567 7590 08/06/2020
Wells St. John P.S.
601 W. Main Avenue
Suite 600
Spokane, WA 99201
EXAMINER
STEIN, MICHELLE
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/06/2020 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):
docketing@wellsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES J. STROHM, JOHN C. LINEHAN,
BENJAMIN Q. ROBERTS, DOUGLAS L. MCMAKIN,
DAVID M. SHEEN, JEFFREY W. GRIFFIN, and JAMES A. FRANZ

Appeal 2019-005870
Application 13/401,216
Technology Center 1700
Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
Appeal 2019-005870
Application 13/401,216

2
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 58–66 and 68–72.3, 4
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to a method of using microwave (MW) and/or
radiofrequency (RF) energies to convert heavy fossil hydrocarbons (HFH) to
a variety of value-added chemicals or fuels. Spec. ¶ 3. Claim 58, reproduced
below, is illustrative of the claimed subject matter:
58. A method for continuous flash conversion of
heavy fossil hydrocarbons (HFH), the method comprising:
simultaneously providing both a continuous HFH feed
and hydrogen-containing process gas feed to a reaction zone,
wherein a mass ratio of the HFH feed to the hydrogen-
containing process gas is greater than 3:1;
dispersing the HFH feed in the process gas while
maintaining a pressure of greater than 0.9 atm within the
reaction zone; and
concentrating microwave or RF energy in the reaction
zone using a microwave or RF energy source to generate

1 This Decision includes citations to the following documents: Specification
filed February 21, 2012 (“Spec.”); Appeal Brief filed March 2, 2019
(“Appeal Br.”); Examiner’s Answer dated May 30, 2019 (“Ans.”); and
Reply Brief filed July 30, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Battelle
Memorial Institute. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
4 The Examiner entered the Appellant’s After-Final Amendment cancelling
claim 67, and withdrew the rejection of claim 67 under 35 U.S.C. § 112 as
indefinite. See Advisory Action dated December 6, 2018; Ans. 7.
Appeal 2019-005870
Application 13/401,216

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dielectric discharges within the reaction zone to flash convert
the HFH.
Appeal Br. 16 (Claims App.).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Murphy US 5,328,577 July 12, 1994
Medoff US 2010/0105119 A1 Apr. 29, 2010
REJECTIONS
The Examiner states that the prior rejections under 35 U.S.C. § 103(a)
have been withdrawn and are replaced by the following new grounds
(Ans. 7):
1. Claims 58, 59, 62–66, 68–70, and 72 are rejected under 35
U.S.C. § 103(a) as unpatentable over Murphy.
2. Claims 60, 61, and 71 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Murphy in view of Medoff.
OPINION
Independent claims 58 and 68 recite methods for continuous flash
conversion of heavy fossil hydrocarbons (HFH). See Appeal Br. 16, 18
(Claims App.). Independent claim 58 requires that “a mass ratio of the HFH
feed to the hydrogen-containing process gas is greater than 3:1.”
Independent claim 68 includes a similar limitation. The Specification defines
the term “HFH” as referring to “bitumen, coal of any rank (i.e., bituminous,
sub-bituminous, lignite, etc.), oil sands (i.e., bitumen containing ores), oil
shale, petroleum resids, asphaltenes and pre-asphaltenes, and any other
Appeal 2019-005870
Application 13/401,216

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kerogen-containing materials[,] . . . biomass, plastics, municipal waste,
sludge, or other carbon-rich materials.” Spec. ¶ 10. The Specification
discloses that “[e]xamples of suitable process gases include, but are not
limited to, nitrogen, carbon dioxide, methane, natural gas, recycle gas,
carbon monoxide, argon, helium, water vapor, oxygen, and combinations
thereof.” Id. ¶ 7. Claims 58 and 68 require that the process gas, or mixture of
HFH feed and process gas, contain hydrogen.
Murphy is directed to a method of upgrading low value hydrocarbons.
Murphy, Abstract. Murphy discloses that “[s]uitable low value hydrocarbons
include whole crude as well as any of its fractions . . . . The low value
hydrocarbon may be derived from petroleum sources or from shale oil
kerogen, tar sands, bitumen processing, synthetic oils, coal hydrogenation,
and the like.” Id. at 2:50–58. Murphy discloses that, in addition to the low
value hydrocarbon, the feed stream to the reaction zone includes a hydrogen
donor. Id. at 1:54–55. Murphy defines “hydrogen donor” as “any chemical
species having a donatable hydrogen.” Id. at 2:61–62. Murphy further
discloses that “[o]ther gases such as N2 may be present as well.” Id. at 2:66.
Murphy teaches that “[t]he amount of hydrogen in the reaction zone during
upgrading should be sufficient to maintain a carbon (based on carbon in the
molecules in contact with the plasma initiators) to hydrogen weight ratio less
than 6:1, . . . most preferably less than 1.5:1.” Murphy 4:42–48.
The Examiner determined that although “the claims are drawn to
hydrocarbon to hydrogen mass ratios[, it] would have been obvious to the
person having ordinary skill in the art to have converted the Murphy carbon
to hydrogen ratios by using the molecular weight of hydrocarbon, in order to
obtain the ratio of hydrocarbon to hydrogen.” Ans. 4.
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Application 13/401,216

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The Appellant argues that Murphy discusses ratios of elements within
a molecule, which “is wholly different than the ratios of the two reactants
(HFH and process gas) presently claimed in the independent claims.” Reply
Br. 9. The Appellant argues that “[i]t is unreasonable to expand the C:H
molecule suggestions to claims reciting reactant to reactant ratios because
there simply is no rational basis to do so.” Id.
The Appellant’s argument is persuasive of reversible error in the
Examiner’s rejections. The Examiner has not explained persuasively why
Murphy’s disclosure of a carbon to hydrogen weight ratio of less than 6:1
suggests formulating an HFH feed to hydrogen-containing process gas mass
ratio of greater than 3:1. As explained by the Appellant,
[t]he claimed reactants are much more than just hydrocarbon,
the HFH feed can include, but is not limited to for example,
coal, coal/biomass blends, oil sands, coke, and/or char recycle
for example. These materials are not just hydrocarbons; hence
they are claimed as HFH feed. It follows that the conversion the
Examiner refers to in the Answer would not be obvious to a
person having ordinary skill in the art because that conversion
would only be accounting for carbon within the HFH feed and
not the additional components of the HFH feed. The same is
true for the hydrogen-containing process gas reactant; while this
can be hydrogen alone, it also can include, but is not limited to
for example, nitrogen, carbon dioxide, methane, natural gas,
recycle gas, carbon monoxide, argon, helium, water vapor,
and/or oxygen. Again, the conversion the Examiner refers to in
the Answer would only account for hydrogen and not any of
these other components.
Reply Br. 14–15. As further pointed out by the Appellant (Reply Br. 8), the
claims recite a minimum HFH feed to hydrogen-containing process gas
ratio, whereas Murphy suggests decreasing the weight ratio of carbon to
hydrogen (Murphy 4:42–52).
Appeal 2019-005870
Application 13/401,216

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Because the Appellant has argued persuasively that the record
evidence fails to support the Examiner’s finding that Murphy discloses or
suggests the claimed HFH feed to process gas mass ratio, we do not sustain
the rejections under 35 U.S.C. § 103(a).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
58, 59,
62–66,
68–70, 72
103(a) Murphy 58, 59,
62–66,
68–70, 72
60, 61, 71 103(a) Murphy, Medoff 60, 61, 71
Overall
Outcome:

58–66,
68–72

REVERSED