Lott, Roger K.

Patent Trials and Appeals Board

Sep 2, 2020

11374369 - (D) (P.T.A.B. Sep. 2, 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.
11/374,369 03/13/2006 Roger K. Lott 15913.706 8381
22913 7590 09/02/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER K. LOTT
Appeal 2019-003422
Application 11/374,369
Technology Center 1700
Before N. WHITNEY WILSON, MERRELL C. CASHION, JR.,
and JANE E. INGLESE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s April 24, 2018 decision to finally reject claims 1–4, 6–8, 10–18,
23–25, 36–38, 40–42, 44–46, and 48–63 (“Final Act.”). Claims 5, 9, 19–22,
26–35, 39, and 43 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Hydrocarbon Technology & Innovation, LLC (Appeal Br. 3).
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Application 11/374,369

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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for mixing a catalyst
precursor with a heavy oil feedstock in advance of hydroprocessing the
heavy oil feedstock to upgrade it (Abstract). The catalyst precursor is pre-
mixed with a hydrocarbon diluent to form a diluted catalyst precursor (id.).
The diluted catalyst precursor is then mixed with at least a portion of the
heavy oil feedstock (id.). Claim 1, reproduced below from the Claims
Appendix, is illustrative of the claimed subject matter:
1. A method for thoroughly mixing a catalyst precursor
throughout a heavy oil feedstock prior to forming an active
catalyst from the catalyst precursor in situ within the heavy oil
feedstock, comprising:
using a first continuous flow mixing apparatus, pre-
mixing a stream of an oil soluble catalyst precursor with a
stream of a hydrocarbon oil diluent below a decomposition
temperature of the catalyst precursor so that the catalyst
precursor is substantially homogeneously dispersed throughout
the diluent to form a diluted catalyst precursor mixture stream
and without decomposition of the catalyst precursor and
formation of active catalyst particles, the catalyst precursor
consisting essentially of metal ions complexed with organic
anions, the hydrocarbon oil diluent having a boiling point of at
least about 150°C, wherein the weight ratio of catalyst
precursor to hydrocarbon oil diluent is between about 1:500 and
about 1:1; and
prior to heating to decompose the catalyst precursor and
form active catalyst particles and using a second continuous
flow mixing apparatus downstream from the first continuous
flow mixing apparatus, mixing the diluted catalyst precursor
mixture stream with a heavy oil feedstock stream having a
viscosity greater than the viscosity of the catalyst precursor for
a time period of about 0.005 second to about 20 seconds and
below a temperature at which substantial decomposition of the
catalyst precursor occurs to form a conditioned heavy oil
feedstock stream in which the catalyst precursor is dispersed
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Application 11/374,369

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throughout the heavy oil feedstock stream prior to substantial
decomposition of the catalyst precursor and formation of active
catalyst particles and so as to provide from about 5 to about 500
ppm by weight of metal from the catalyst precursor within the
heavy oil feedstock stream.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cyr et al. US 5,578,197 November 26, 1996
Que et al. US 6,660,157 B2 December 9, 2003
REJECTION
Claims 1–4, 6–8, 10–18, 23–25, 36–38, 40–42, 44–46, and 48–63 are
rejected under 35 U.S.C. §103 as unpatentable over Cyr in view of Que.
DISCUSSION
The Examiner finds that Cyr discloses a method comprising (a) mixing
an oil soluble catalyst precursor, such as iron pentacarbonyl or molybdenum
2-ethyl hexanoate, with a diluent such that the catalyst precursor is dispersed
throughout the diluent, and (b) mixing the diluted catalyst precursor with a
heavy oil feedstock (Final Act. 3, citing Cyr, 3:10–22, 4:59–63). The
Examiner acknowledges, inter alia, that “Cyr does not explicitly disclose
wherein the catalyst precursor is dispersed throughout the diluent prior to
mixing the diluted catalyst precursor with the heavy oil feedstock” (Final
Act. 4). To address this, the Examiner states:
Moreover, with respect to Applicant's limitation of dispersing
the catalyst precursor in the diluent ‘prior to’ mixing the diluted
catalyst precursor with the heavy oil feedstock, the court has
long held that the selection of any order of performing process
steps is prima facie obvious in the absence of new or
unexpected results.
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Application 11/374,369

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(Final Act. 4–5, citations omitted).2
We have reviewed Appellant’s arguments as set forth in the Appeal
Brief and Reply Brief, as well as the findings and contentions set forth in the
Examiner’s Final Office Action and Answer, and determine that the
preponderance of the evidence of record supports Appellant’s argument that
Cyr, either alone or in combination with Que, does not teach or suggest the
two-step process recited in the claims.
Cyr specifically states that in its method “dispersion is therefore
preferably achieved in a distinct step prior to heating to additive
decomposition or hydrocracking temperature, by mixing the heavy oil plus
additive plus diluent mixture . . . . ” (Cyr, 5:27–30, emphasis added).
Although, as noted by this passage and articulated by the Examiner (Ans. 7),
this is the “preferable” approach – and hence not the only approach– is it
apparent that the alternative approach (i.e., non-preferred) is not the two-step
method set forth in the appealed claims, but instead is the complete omission
of the diluent:
When the diluent was omitted from the combination, or the
diluent was not a good solvent of asphaltenes or when stripping
of light ends was not sufficient, experimental runs showed
significant coke deposition. It is to be understood however that
diluent addition is only a preferred feature.

(Cyr, 5:21–26). Thus, we determine that the preponderance of
evidence of record supports a finding that Cyr does not teach a two-

2 The Examiner makes additional findings and determinations based on Que
that address different limitations in the claim not disclosed by Cyr. These
findings and determinations are not germane to our disposition of this appeal
and, therefore, neither they nor Appellant’s arguments pertaining to them are
addressed in this decision.
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step approach in which the catalyst precursor is mixed with the diluent
prior to mixing with the heavy oil feedstock.
Thus, the rejection rests on a conclusion that it would have been
obvious to separate the one-step process taught by Cyr into two separate
steps, as set forth in the independent claims on appeal. In this regard, the
Examiner relies on case law which states that the selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results (Final Act. 4–5, citing Ex parte Rubin, 128 USPQ 440
(Bd. App. 1959) and In re Burhans, 154 F. 2d 690 (CCPA 1946); and Ans.
6).
However, in this instance, we agree with Appellant (Reply Br. 3–4)
that its process is not a simple reordering of steps relative to Cyr’s process,
but instead involves a different process, in which a different intermediate
composition (the diluted catalyst precursor mixture stream recited in claim 1)
is formed, an intermediate composition which is never present in Cyr. Cyr
does not teach or suggest this additional step, which has, according to the
claims and the Specification, the added benefit of allowing for full mixture of
the catalyst precursor in the heavy oil feedstock in a short period of time (no
more than 20 seconds). By contrast, Cyr’s system appears to require from 20
minutes to 24 hours to achieve the requisite amount of mixing (Cyr 9:55–67;
10:4–12).
Accordingly, we conclude that the preponderance of evidence of
record does not support the obviousness rejection over Cyr in view of Que.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–8,
10–18, 23–
25, 36–38,
40–42, 44–
46, and 48–
63
103 Cyr, Que 1–4, 6–8, 10–18,
23–25, 36–38,
40–42, 44–46,
and 48–63
REVERSED