Lott, Roger K.

Patent Trials and Appeals BoardAug 26, 2020

12547278 - (D) (P.T.A.B. Aug. 26, 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. 12/547,278 08/25/2009 Roger K. Lott 15913.706.1 4972 22913 7590 08/26/2020 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 08/26/2020 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 2019-003424 Application 12/547,278 Technology Center 1700 ____________ Before GEORGE C. BEST, JEFFREY W. ABRAHAM, and JEFFREY R. SNAY, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–36 of Application 12/547,278. Final Act. (May 11, 2018). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. I. BACKGROUND The ’278 Application describes methods and systems for mixing a catalyst precursor containing a metal salt or complex—e.g., a molybdenum 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Hydrocarbon Technology & Innovation, LLC as the real party in interest. Appeal Br. 3. Appeal 2019-003424 Application 12/547,278 2 salt or complex—with heavy oil feedstocks to form a hydroprocessing catalyst in situ. Spec. ¶ 2. In particular, the Specification describes a three step process: (1) mixing the catalyst precursor with a hydrocarbon diluent with a first mixer, (2) mixing the diluted catalyst precursor with the heavy oil feedstock with a second mixer to produce a conditioned feedstock, and (3) a third mixing step with a third mixer to more completely mix the conditioned feedstock. Id. ¶ 12. Claim 1 is representative of the ’278 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief. We have italicized the limitations that are central to the issues discussed in this opinion. 1. A system for preparing a conditioned heavy oil feedstock, comprising: an oil-soluble catalyst precursor stream; a hydrocarbon diluent stream having a boiling point of at least about 150°C, that is substantially water free such that the hydrocarbon diluent contains less than 0.5% water, the hydrocarbon diluent being selected from vacuum gas oil, decant oil, cycle oil, start up diesel, or light gas oil; a heavy oil feedstock stream comprising asphaltenes and hydrocarbons with a boiling point of about 524°C or higher; a continuous flow pre-mixer configured and operable for receiving and premixing the oil-soluble catalyst precursor stream and the hydrocarbon diluent stream at a temperature in a range of about 25°C to about 300°C and without decomposition of the oil-soluble catalyst precursor and without formation of active catalyst particles to form a diluted catalyst precursor mixture stream; a second continuous flow mixer, downstream from the continuous flow pre-mixer and upstream from a heater for decomposing the catalyst precursor and forming active catalyst particles, configured and operable for receiving and initially Appeal 2019-003424 Application 12/547,278 3 mixing the diluted catalyst precursor mixture stream and the heavy oil feedstock stream for a time period in a range of about 0.005 second to about 20 seconds at a temperature in a range of about 25°C to about 300°C and without decomposition of the oil-soluble catalyst precursor and without formation of active catalyst particles to form a conditioned heavy oil feedstock stream; and at least one additional mixer, downstream from the second mixer and upstream from a heater for decomposing the catalyst precursor and forming active catalyst particles, configured and operable for receiving and further mixing of the conditioned feedstock stream to thoroughly mix the oil-soluble catalyst precursor with the heavy oil feedstock without decomposition of the oil-soluble catalyst precursor and without formation of active catalyst particles. Appeal Br. 27 (emphasis added). II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1–21, 26–28, and 31–34 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Cyr,2 Catalfamo,3 Que,4 and Liu.5 Final Act. 3. 2. Claims 22–25, 29, 30, 35, and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Cyr, Catalfamo, Que, Liu, and Ogles.6 Final Act. 6. 2 US 5,578,197, issued November 26, 1996. 3 US 6,550,960 B2, issued April 22, 2003. 4 US 6,660,157 B2, issued December 9, 2003. 5 US 7,285,698 B2, issued October 23, 2007. 6 US 3,816,020, issued June 11, 1974. Appeal 2019-003424 Application 12/547,278 4 III. DISCUSSION A. Incorporation by reference Appellant’s brief states that: Appellant incorporates by reference, in their entirety, the arguments in support of patentability set forth in Amendment “H” and Response filed January 19, 2018. To the extent that they still apply, Appellant also incorporates by reference, in their entirety, the arguments set forth in: Amendment “G” and Response filed July 14, 2017; Amendment “F” and Response filed December 15, 2016; Amendment “E” and Response filed April 4, 2015; Supplemental Amendment “D” filed August 8, 2014; Amendment “C” and Response filed July 22, 2014; Amendment “B” and Response filed November 12, 2012; and Amendment “A” and Response filed May 9, 2012. Appeal Br. 13 (emphasis added). Appellant cannot incorporate the arguments made in Amendment H in their entirety into this brief by reference. As the rules governing appeals provide, “any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.” 37 C.F.R. § 41.37(c)(1)(iv) (2018) (emphasis added). This language does not permit incorporation by reference, as it requires arguments to be considered by the Board actually to be in the appeal brief. To borrow an image from the 7th Circuit, we are not truffle-hunting pigs looking for reasons to reverse a rejection that Appellant has not expressly stated in the appeal brief. See U.S. v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Moreover, Appellant attempts to burden us with reviewing Amendments A–G and sorting through which arguments made therein might still apply to the rejections currently before us. Appeal Br. 13 (“To the extent that they still apply . . . .”). As the Federal Circuit has explained, “it has long Appeal 2019-003424 Application 12/547,278 5 been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). In view of this well-established practice, Appellant’s attempt to shift the burden to us is ineffective and inappropriate. In view of the foregoing, Appellant’s attempts to incorporate arguments by reference are ineffective. B. Rejection of claims 1–21, 26–28, and 31–34 as unpatentable over Cyr, Catalfamo, Que, and Liu Appellant argues for reversal of this rejection without differentiating between the claims on appeal. See Appeal Br. 13–26. We, therefore, select independent claims 1 and 26 as representative of the group of claims subject to this rejection. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims subject to this ground of rejection—which depend, either directly or indirectly, from independent claims 1 and 26—will stand or fall with claims 1 and 26. In rejecting claims 1 and 26, the Examiner found, in pertinent part, that Cyr discloses an apparatus for mixing a catalyst precursor into a heavy oil feedstock comprising one or more mixers for mixing the catalyst precursor with the diluent and heavy oil. Final Act. 3 (citing Cyr 5:27–38). The Examiner further found that Cyr does not explicitly disclose a pre-mixer for pre-mixing the catalyst precursor with the diluent. Id. The Examiner next turned to case law and stated that the court has held that the selection of any order for mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975 (CCPA 1930). Thus, Examiner finds the separately recited ‘pre- mixer’ for ‘pre-mixing’ the catalyst precursor and diluent prior to additional mixing with the heavy oil to be unpatentable over Cyr in the cited patent case law. Id. (emphasis omitted). Appeal 2019-003424 Application 12/547,278 6 After reviewing the record and cited case law, we determine that the Examiner has erred by so finding. We agree with the Examiner that Cyr does not describe a pre-mixer for premixing the catalyst precursor and diluent. We further find that Cyr does not suggest a premixing step. Rather, Cyr describes simultaneously mixing the catalyst precursor, diluent, and heavy oil. See Cyr 3:10–25, 4:1– 6, 5:27–38. The Examiner points to Gibson as supporting the determination that it would have been obvious to a person of ordinary skill in the art at the time of the invention to divide Cyr’s single, simultaneous, mixing step into two steps: first, mixing the catalyst precursor and the diluent to create a diluted catalyst precursor stream and, second, mixing the diluted catalyst precursor stream with the heavy crude oil. Final Act. 3. This analysis is consistent with Gibson. In that case, the Court of Customs and Patent Appeals affirmed the rejection of claims for preparing a “mix” for brake shoe fillers. Gibson, 39 F.2d at 976–77. In Gibson, the prior art described a brake shoe filler mix comprising a heat resistant fiber, a non-expanding absorbent, and a frictional resistant. Id. at 976. The prior art further stated that “‘[t]hese ingredients are thoroughly stirred together by any suitable means in either a hot or cold condition.’” Id. (quoting prior art). Based on this disclosure, the court determined that the Board of Appeals properly affirmed the rejection of claims that required first mixing the heat resistant fiber and the non-expanding absorbent and then introducing the frictional resistant. Id. at 977. The court said that it was “in entire accord” with the Board’s statement that “‘the proper sequence of adding the three ingredients to obtain the most satisfactory mixture of three constituents is within the expected skill and judgment of a mechanic and Appeal 2019-003424 Application 12/547,278 7 such choice of sequence does not involve invention.’” Id. at 976–77 (quoting Board). Gibson, however, is not as expansive as the Examiner believes it to be. Gibson concerned process claims. See id. at 976. Here, the claims at issue are apparatus claims. This makes a substantial difference. In this case, Cyr describes a process of mixing the catalyst precursor, diluent, and heavy crude oil simultaneously in a stirred tank mixer. See, e.g., Cyr 5:27–38. Applying Gibson to these facts, we determine that it would have been obvious to a person of ordinary skill in the art to first mix the catalyst precursor and diluent in a stirred tank mixer and then to add the heavy crude oil to that stirred tank mixer. Appellant’s claims, however, do not encompass such an apparatus. Rather, the catalyst precursor and the diluent are mixed in a first continuous flow mixer to produce a diluted catalyst precursor mixture. A second continuous flow mixer receives the diluted catalyst precursor mixture and the heavy oil feedstock and mixes them for a time period of between about 0.005 to about 20 seconds. Nothing in Cyr describes or suggests the use of different mixers to mix the catalyst precursor and diluent to create the diluted catalyst precursor mixture and to mix the diluted catalyst precursor mixture with the heavy oil feedstock. Here, the Examiner did not explain why a person of ordinary skill in the art would have replaced Cyr’s stirred tank mixer with three different mixers. The Examiner, however, concludes that the person having ordinary skill in the art would have been motivated to modify the system of Cyr to incorporate the static mixers of Catalfamo for the purpose of mixing the catalyst precursor with diluent and thereafter mixing the diluted catalyst precursor with heavy oil feedstock, such modification providing Appeal 2019-003424 Application 12/547,278 8 for a more efficient means for mixing of the process ingredients and ensuring a complete and thorough dispersion of the catalyst precursor in the heavy oil feedstock. Final Act. 5 (emphasis added). Significantly, the Examiner does not cite any prior art evidence supporting the finding that the use of Catalfamo’s static mixers provide a more efficient means for mixing the process ingredients. Such evidence might have come from Catalfamo, Que, or Liu or from the knowledge of a person of ordinary skill in the art. What is important, however, is that the Examiner has the burden of supporting the findings that underlie the conclusion that a claim is unpatentable as obvious with actual evidence. In this case, the Examiner did not meet this burden. Because the Board reviews rejections, we shall not search the record for evidence that the Examiner did not cite. For the reasons set forth above, we reverse the rejection of claims 1– 21, 26–28, and 31–34 as unpatentable over the combination of Cyr, Catalfamo, Que, and Liu. C. Rejection of claims 22–25, 29, 30, 35, and 36 as unpatentable over the combination of Cyr, Catalfamo, Que, Liu, and Ogles 1. Claims 22–25, 29, and 30 Claims 22–25 indirectly depend from claim 1. Because we have reversed the rejection of claim 1, we also reverse the rejection of claims 22– 25. Claims 29 and 30 indirectly depend from claim 26. Because we have reversed the rejection of claim 26, we also reverse the rejection of claims 29 and 30. Appeal 2019-003424 Application 12/547,278 9 2. Claims 35 and 36 Claims 35 and 36 are independent apparatus claims that have been rejected as obvious over the combination of Cyr, Catalfamo, Que, Liu, and Ogles. Final Act. 6–7. The rejection of these claims cannot be affirmed for the same reasons we have given for reversing the rejection of claims 1 and 26. The Examiner cites Ogles as describing a multi-state high-pressure pump suitable for pumping liquids. Id. at 7. This does not cure the deficiencies in the combination of Cyr, Catalfamo, Que, and Liu.7 We, therefore, reverse the rejection of claims 35 and 36. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–21, 26–28, 31– 34 103(a) Cyr, Catalfamo, Que, Liu 1–21, 26–28, 31–34 22–25, 29, 30, 35, 36 103(a) Cyr, Catalfamo, Que, Liu, Ogle 22–25, 29, 30, 35, 36 Overall Outcome 1–36 REVERSED 7 Moreover, the Examiner’s statement of the reasons a person of ordinary skill in the art would have been motivated to combine Ogles with other prior art mentions references that are not part of the appealed rejection. See, e.g., Final Act. 7 (referring to Bearden’s system).