LUMMUS TECHNOLOGY INC.

Patent Trials and Appeals Board

Aug 20, 2020

13758429 - (D) (P.T.A.B. Aug. 20, 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.
13/758,429 02/04/2013 Mario C. Baldassari 17421/142001 3111
80911 7590 08/20/2020
Osha Liang LLP / Lummus
Two Houston Center
909 Fannin, Suite 3500
Houston, TX 77010
EXAMINER
DOYLE, BRANDI M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
bergman@oshaliang.com
docketing@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO C. BALDASSARI, UJJAL K. MUKHERJEE,
ANN-MARIE OLSEN, AND MARVIN I. GREENE
Appeal 2019-005277
Application 13/758,429
Technology Center 1700
Before JEFFREY B. ROBERTSON, WHITNEY N. WILSON, and
LILAN REN, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
Appeal 2019-005277
Application 13/758,429

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DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4 and 7–22. See Appeal Br. 5.3 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to hydroconversion processes,
and more specifically, solvent deasphalting of a residuum hydrocarbon
feedstock, processing the resulting deasphalted oil (DAO) in a residue
desulfurization unit and a residue hydrocracking unit. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter (Appeal Br.,
Claims Appendix 29):
1. A process for upgrading residuum hydrocarbons,
the process comprising:
solvent deasphalting a residuum hydrocarbon fraction to
produce a deasphalted oil fraction and an asphalt fraction;

1 This Decision includes citations to the following documents: Specification
filed February 4, 2013 (“Spec.”); Final Office Action mailed November 24,
2017 (“Final Act.”); Appeal Brief filed December 18, 2018 and corrected on
January 28, 2019 (“Appeal Br.”); Examiner’s Answer mailed May 1, 2019
(“Ans.”); and Reply Brief filed July 1, 2019 (“Reply Br.”).
2 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
Lummus Technology Inc., a wholly owned subsidiary of McDermott
International, Inc. Appeal Br. 2.
3 Appellant does not list the Examiner’s rejections of claims 10–12 in the
Appeal Brief, but appears to acknowledge such rejections in the Reply Brief.
See Reply Br. 2.
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feeding the asphalt fraction, as produced in the solvent
deasphalting, to a first ebullated bed hydrocracking reactor
system;
contacting the produced asphalt fraction and hydrogen with a
first catalyst in the first ebullated bed hydrocracking reactor
system;
recovering an effluent from the first ebullated bed
hydrocracking reactor system;
fractionating the effluent from the first ebu1lated bed
hydrocracking reactor system to recover one or more
hydrocarbon fractions;
contacting the deasphalted oil fraction and hydrogen with a
second catalyst in a fixed bed residue hydrodesulfurization unit,
wherein the deasphalted oil fraction has a metals content of less
than about 80 wppm and a Conradson Carbon Residue (CCR)
content of less than about 10 wt%;
recovering an effluent from the fixed bed residue
hydrodesulfurization unit;
contacting the fixed bed residue hydrodesulfurization unit
effluent or a portion thereof with a third catalyst in a second
ebullated bed hydrocracking reactor system.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Higashi US 5,779,992 July 14, 1998
Morel et al.
hereinafter “Morel”
US 6,447,671 B1 Sept. 10, 2002
Colyar et al.
hereinafter “Colyar”
US 2006/0118463 A1 June 8, 2006
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REJECTIONS
1. The Examiner rejected claims 1, 4, 7, 10–12, 15–19, 21, and 22
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Colyar and
Higashi. Final Act. 6–11.
2. The Examiner rejected claims 2, 3, 8, 9, 13, 14, and 20 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Colyar, Higashi, and
Morel. Final Act. 11–13.

OPINION
Rejection 1
Appellant presents separate arguments with respect to claims 1, 7,4 and
11. See Appeal Br. 6, 24–27. We select claims 1, 7, and 11 as representative
for disposition of this rejection, with the patentability of the other claims
standing or falling with claim 1, 7, and 11. 37 C.F.R. § 41.37(c)(1)(iv).

Claim 1
The Examiner’s Rejection
The Examiner found Colyar discloses a process for upgrading
atmospheric or vacuum residue from heavy crude oils using an integrated
deasphalting-hydroprocessing method including solvent deasphalting the
residue feed to produce a deasphalted oil (DAO) fraction and an asphaltene
fraction. Final Act. 6, citing Colyar ¶¶ 1, 4, 24–26. The Examiner found
Colyar discloses further treating the deasphalted oil from the solvent
deasphalter in a fixed bed hydrotreater/hydrocracker or in an ebullated-bed

4 As pointed out by the Examiner in the Answer, Appellant referred to claim
7 as claim 17 in the Appeal Brief. Ans. 24, Appeal Br. 25.
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T-Star unit. Id. at 6–7, citing Colyar Abstr., ¶¶ 21, 24, 31, 38, 47, 49, 56,
Figure. The Examiner found Colyar discloses sending the DAO to a
hydrocracking unit, fractionating the hydroprocessed DAO effluent stream
to obtain one or more hydrocarbon fractions. Id. at 7, citing Colyar
¶¶ Abstr., Figure, ¶¶ 38, 55, 56. The Examiner found Colyar discloses when
the DAO is heavier, it is typically more prudent to send the DAO to an
ebullated-bed for hydrotreatment/hydrocracking, but the selection of reactor
design is based on a number of criteria including type of feedstock, desired
conversion percentage, flexibility, run, length, product quality, etc. Id. citing
Colyar, ¶ 57. The Examiner found Colyar discloses two-hydroconversion
ebullated bed reactors may be in series. Id. citing Colyar, ¶ 65.
The Examiner found that although Colyar discloses using both fixed
bed hydrotreating and hydrocracking reactors and ebullated bed
hydrotreating and hydrocracking reactors for processing the DAO fraction,
Colyar does not expressly disclose an embodiment using both, with the
DAO first hydrotreated for hydrodesulphurization in a fixed bed reactor
followed by hydrocracking in a second ebullated-bed reactor. Id. at 8.
The Examiner found that Higashi discloses a process for hydrotreating
heavy oil fractions using a combination of fixed- and suspended-bed
(including ebullated-bed type suspended reactors). Id., citing Higashi,
Abstr., Fig. 1, col. 5, ll. 50–52, claim 5. The Examiner found Higashi
discloses treating heavy oil feeds preferably where 80% have a boiling point
higher than 343 °C and contain metals in an amount of 30 ppm or greater.
Id. citing Higashi, col. 4, ll. 24–38. The Examiner found Higashi discloses
that a feedstock is first passed through one or more fixed-bed hydrotreating
reactors to remove impurities such as sulfur and metals, and then passed to
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one or more ebullated-bed reactors for further hydrotreating to removed low
reactivity impurities, and where desired, subjecting the feed to
hydrocracking. Id. citing Higashi, col. 3, ll. 4–19, 35–58, col. 4, ll. 32–38,
col. 6, ll. 59–63, col. 7, ll. 14–49, Figs. 1, 5, and 6. The Examiner found
Higashi discloses that through use of such a combination of fixed-bed
reactor(s) upstream of ebullated-bed type reactor(s), desired conversion is
achieved while minimizing product degradation, minimizing coking,
plugging, and other drawbacks associated with using only fixed-bed
reactors, only ebullated-bed reactors, or ebullated-bed reactors upstream of
fixed-bed reactors. Id. at 8–9, citing Higashi, col. 1, l. 22 – col. 2, l. 60, col.
4, ll. 39–50, col. 6, ll. 21–45, col. 16, l. 61 – col. 17, l. 10.
The Examiner found the DAO feed examples in Colyar have boiling
and metal contents within the ranges of Higashi. Id. at 9. The Examiner
determined that it would have been obvious to have used the combination of
fixed and ebullated-bed reactors disclosed in Higashi for treating the DAO in
the process disclosed in Colyar for the benefit of achieving the desired
conversion while minimizing product degradation, coking, and plugging. Id.
The Examiner determined it would have been obvious to have combined the
prior art fixed-bed treating with ebullated-bed hydrocracking according to
known methods to yield predictable results. Id.

Appellant’s Contentions
Appellant argues the fixed bed hydrotreater reactor or T_Star Unit
disclosed in Colyar is not the same as the claimed fixed bed residue
hydrodesulfurization unit. Appeal Br. 7. Appellant argues the fixed bed
hydrotreator reactor or T_Star Unit disclosed in Colyar converts the
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deasphalted oil stream and/or cleans the deasphalted oils stream to be fed to
the fluid catalytic cracking (FCC) unit. Id. Appellant contends it would not
have been obvious to have placed a fixed bed residue hydrodesulfurization
unit upstream of a residue FCC because both process vacuum residue such
that it would not have been obvious to have placed one residue
hydrocracking unit directly after another. Id.; see id. at 15.
Appellant acknowledges that Colyar discloses deasphalted oil fraction
feeds having a metals content of less than 100 wppm, such as the feeds
recited in claim 1, should be processed in a fixed bed hydrotreater. Id. at 8,
citing Colyar ¶¶ 38, 43. Appellant argues Colyar discloses feeds having
higher levels of contaminants, particularly CCR and metals, are difficult for
a fixed-bed system and are typically processed in an ebullated T_Star unit.
Id. at 11, 16–17. Appellant argues Colyar discloses problems with fixed-bed
technologies treating heavy charges, which teaches away from sending a
heavy feed through a fixed bed. Id. at 9, citing Colyar ¶¶ 57, 58; see id. at
17–18. In other words, Appellant argues that in view of Colyar, if a DAO
fraction is first processed in a fixed bed reactor it would contain lower levels
of contaminants, such that the obtained effluent would not subsequently be
processed in an ebullated reactor, which Colyar discloses is used for treating
heavy charges.
Appellant argues Colyar teaches fixed bed hydrotreating or ebullated
bed hydrocracker, but not both as recited in claim 1, such that if Colyar were
to be modified as suggested by the Examiner, the principle of operation
would be changed as Colyar is only interested in providing a feedstock to the
FCC. Id. at 9–10.
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Appellant argues further the hydrocracking in Higashi cited by the
Examiner is merely a side reaction and Higashi is concerned with the
removal of metals, sulfur, and nitrogen from a heavy oil, not a DAO feed.
Id. at 11–12.
Appellant argues unexpected results in using an ebullated
hydrocracker bed after a fixed bed desulfurization reactor for treating a DAO
stream, namely, reducing sulfur and nitrogen and adding hydrogen to the
DAO results in an easier hydrocracking process with higher conversion. Id.
at 14–15. Appellant argues a technical advantage over Colyar in increased
feedstock conversion while maintaining low sulfur content in the products.
Id. at 18–19.

Issue
The dispositive issue with respect to this rejection is:
Did the Examiner err in determining the process for upgrading
residuum hydrocarbons recited in claim 1 would have been obvious over
Colyar and Higashi?

Discussion
We are not persuaded by Appellant’s arguments that the combinations
of Colyar and Higashi fails to render obvious subjecting a DAO fraction to a
combination of a fixed bed residue hydrodesulfurization unit and an
ebullated bed hydrocracking reactor system as recited in claim 1. Although
Appellant contends that the fixed bed hydrotreater reactor or T_Star Unit
disclosed in Colyar is not the same as the claimed fixed bed residue
hydrosulfurization unit, Appellant has not sufficiently explained why such is
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the case. Colyar expressly discloses the DAO stream is introduced into a
classical fixed-bed hydrotreater/hydrocracker reactor “where it is processed
to reduce contaminant levels and increase hydrogen content” and to
“upgrade the feedstock.” Colyar, ¶¶ 21, 38, 39, 46, 47. In this regard, as the
Examiner points out, Colyar discloses also the fixed-bed “hydrocracking
step” includes “an initial hydrotreatment step to reduce nitrogen and sulfur
contents of the feed being processed by the hydrocracking catalyst” and may
include a “two-stage configuration with a separation step between the first
and the second stages.” Final Act. 6–7; Ans. 14–15; Colyar ¶ 47.
Higashi discloses a process for treating heavy oils containing
impurities including metals, sulfur, and nitrogen compounds. Higashi, col.
1, ll. 9–13. Higashi discloses first feeding a heavy oil to a fixed bed reactor
with a hydrotreating catalyst to remove impurities such as sulfur (step (a)),
and then feeding the hydrotreated heavy oil to a suspended-bed reactor, such
as an ebullated reactor, to further hydrotreat or hydrocrack the hydrotreated
heavy oil (step (b)). Id. at col. 2, l. 63 – col. 3, l. 19; col. 5, ll. 49–52; col. 6,
ll. 58–62; col. 7, ll. 13–14; Tables 1–8; Figs. 1, 5. Higashi’s disclosure is
consistent with Colyar’s two-step process involving hydrotreating followed
by hydrocracking discussed above. In addition, Colyar discloses further
hydrocracking of the DAO stream takes place in an FCC unit. Colyar, Fig.
1. Thus, we are not persuaded by Appellant’s argument that it would not
have been obvious to have placed a fixed bed residue hydrodesulfurization
unit upstream of a residue FCC.
We are unpersuaded by Appellant’s argument that it would not have
been obvious to have placed a fixed-bed hydrotreater upstream to an
ebullated bed hydrocracker in view of the difference in feed oil between
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Colyar and Higashi and Colyar’s disclosure of circumstances where
ebullated reactors are favored over fixed bed reactors. In particular, Colyar
discloses that even in the case of C3/C4 solvent, the DAO fixed bed
hydrotreater “operates at conditions similar to those used to treat a heavy
vacuum gas oil feedstock” and “upgrade[s] the feedstock of which 90 wt. %
if the compounds have an initial boiling point above 650 °F (343 °C).”
Colyar ¶¶ 38, 39. Colyar discloses the DAO stream that enters the fixed-bed
reactor contains less than 100 wppm of metals and that a guard bed or
reactor can be located before the fixed-bed of hydroprocessing catalyst to
reduce asphaltene content as well as metal content. Colyar ¶ 43. Higashi
discloses the heavy oil “preferably contains a fraction having a boiling point
higher than 343 °C in an amount of at least 80%.” Higashi, col. 4, ll. 23–25.
Higashi does not particularly limit the heavy oil and discloses examples
including “vacuum gas oil, crude oil, atmospheric distillation residue, and
vacuum distillation residue.” Id. at col. 4, ll. 29–31.
Although we appreciate Colyar’s disclosure that “it is typically more
prudent” in the case where a C5 or heavier solvent is used in the SDA Unit,
to send the resulting DAO stream to an Ebullated-bed for
hydrotreatment/hydrocracking (Colyar ¶ 56), as the Examiner points out,
Colyar discloses also that “[t]he decision to utilize a fixed-bed or ebullated-
bed reactor design is based on a number of criteria including type of
feedstock, desired conversion percentage, flexibility, run length, product
quality, etc.” Id. at ¶ 57. In the context of the proposed combination of
Colyar and Higashi, such factors would take into account Colyar’s
disclosure of a hydrocracking step to produce middle distillates (Colyar
¶¶ 46, 47) in view of Higashi’s disclosure that hydrocracking is done in the
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suspended (ebullated) reactor of step (b) after hydrotreating (Colyar, col. 6,
ll. 58–62; col. 7, ll. 13–14). See Ans. 20. For these reasons, we are not
persuaded by the Appellant’s position that Colyar teaches away from the
Examiner’s combination or the statements made in the Mukherjee
Declaration,5 which does not appear to acknowledge these disclosures in
Colyar and Higashi. Mukherjee Decl. ¶¶ 12–15.
Accordingly, we are of the view that the Examiner’s reasoning for
including a fixed bed reactor followed by an ebullated reactor in the
combined hydrotreating/hydrocracking step disclosed in Colyar in view of
Higashi is sufficiently supported by the record.
As to Appellant’s argument that the combination of an ebullated
hydrocracker bed after a fixed bed desulfurization reactor for treating a DAO
stream produces unexpected results by reducing sulfur and nitrogen and
adding hydrogen to the DAO results in an easier hydrocracking process with
higher conversion, we agree with the Examiner’s assessment that Appellant
has not provided a sufficient showing that these benefits obtained from the
process would have been unexpected. Ans. 20–21. That is, Appellant has
failed to sufficiently explain why one of ordinary skill in the art would not
have expected easier and higher conversion in further hydrocracking when
there are fewer impurities present in the feed.
As a result, we affirm the Examiner’s rejection of claims 1, 19, 21,
and 22.

5 Declaration Pursuant to 37 C.F.R. § 1.132 of Ujjal K. Mukherjee dated
August 24, 2017.
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Claims 4, 7, 11, 12, and 15–18
Although Appellant lists a number of claims under this heading,
Appellant discusses only claims 7 and 11. Appeal Br. 24–26. Accordingly,
as discussed above, we limit our discussion to claims 7 and 11.
Claim 7
Claim 7, depends from claim 4 and recites “wherein the effluent from
the first ebullated bed hydrocracking reactor system and the second
ebullated bed hydrocracking reactor system are fractionated in a common
fractionation system.”
The Examiner found Colyar does not teach fractionating the effluent
from the asphalt hydroconversion reactors and DAO hydroconversion
reactors of Colyar in a common fractionation unit. Final Act. 10. The
Examiner found both systems are used to convert the fractions of a vacuum
residue into lighter products. Id., citing Colyar, ¶¶ 44, 46, 53, 70, 77, Table
5. The Examiner determined it would have been obvious to use a common
fractionation column to distill effluents from hydroconversion of the vacuum
residue asphalt and DAO to recover common product streams of naphtha,
gasoline, diesel, distillates, gas oil, while minimizing capital cost and
without obtaining new or unexpected results. Id.
Appellant contends the Examiner’s rationale to use a common
separation system is misguided, because one of ordinary skill in the art
would recognize that such a system would need to be larger and more
complex, and operate under more robust conditions than individual
separation trains. Id. at 25. Appellant contends it would not have been
obvious that the common separation train would yield the same, acceptable,
or desirable product quality as a result of different conditions. Id. at 25–26.
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We are not persuaded by Appellant’s arguments. As to the
complexity of a common unit we agree with the Examiner that, a common
separation unit, which will require larger capacity than two separate units,
will not necessarily require the same volume and physical space as two
units. Ans. 24. In addition, the Examiner further explains the use of
common fraction unit is known in the art and if such common fraction unit
requires a special design that is non-obvious, the Specification does not
sufficiently describe such a unit. Ans. 24–25.
We are unpersuaded by Appellant’s argument that it would not have
been obvious to obtain the same or acceptable product quality using
common separation train. Appellant’s contentions that a new equilibrium
state would be reaches as a result of the Examiner’s combination, which “is
not a trivial exercise for a person of ordinary skill in the art” (Appeal Br.
26), is not supported by objective evidence and is insufficient to rebut the
Examiner’s reasoning that common fraction units are known in the art, and
the conversion products include middle distillates in the same ranges. Ans.
24–25.

Claim 11
Claim 11 depends from claim 1, and recites that the process “results in
a hydrocarbon conversion in the range from about 40 wt% to about 75 wt%,
sulfur removal is in the range from about 40 wt% to about 80 wt%, metals
removal is in the range from about 60 wt% to about 85 wt% and Conradson
Carbon Residue (CCR) removal is in the range from about 30 wt% to about
65 wt%.”
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The Examiner found Colyar discloses examples where the residue
conversion falls within the range recited in claim 11, but Colyar does not
disclose the sulfur removal, metals removal, or CCR removal recited therein.
Final Act. 10. The Examiner found that because Colyar discloses operating
the asphalt ebullated-bed reactor(s) under the same or overlapping
conditions as disclosed in the Specification, it would have been expected
that the same sulfur, metal, and CCR removal would be achieved in the
process of Colyar. Id. at 10–11. The Examiner determined also that it
would have been obvious to have optimized the number of beds, catalyst,
and reaction conditions as taught in Colyar, to achieved the desired product
quality. Id. at 11, citing Colyar, Table 1, Table 2, ¶¶ 64–73.
Appellant contends that because Colyar does not disclose using the
required reactors and separation train in the claims, the Examiner’s position
that product quality may be maintained is misguided. Id. at 26. Appellant
argues that even if the combination with Higashi was appropriate, there is
nothing to suggest that product quality would be maintained with the new
rejection scheme. Id. Appellant argues that in view of the Examiner’s
position that Colyar discloses the desired sulfur removal, CCR removal,
there would not be a reason to modify Colyar as suggested by the Examiner.
Id. at 26–27.
We are not persuaded by Appellant’s argument largely for similar
reasons as discussed above for claim 7. See Ans. 25. As to Appellant’s
position that if Colyar alone achieved the desired result, there would be no
reason to look to Higashi, we agree with the Examiner, that Higashi
discloses an improved process for hydrotreating and hydrocracking
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deasphalted oil as discussed above, thus providing reasons for making the
modification. Ans. 25–26.

Rejection 2
Appellant presents separate arguments with respect to claims 2, 3, 8,
9, 13, 14, and 20 subject to this rejection. See Appeal Br. 6, 21–24. We
select claims 2, 3, 8, 13, 14, and 20 as representative for disposition of this
rejection, with the patentability of the other claims standing or falling with
claims 2, 3, 8, 13, 14, and 20. 37 C.F.R. § 41.37(c)(1)(iv).

Claim 20
The Examiner’s Rejection
Claim 20 recites a process similar to claim 1, and additionally recites
“wherein a fuel oil produced via the fractionation of the second ebullated
bed hydrocracking reaction system effluent has a sulfur content of 0.75 wt%
or less.”
In rejecting claim 20 as obvious over the combination of Colyar,
Higashi, and Morel, the Examiner found Colyar does not disclose a fuel oil
having a sulfur content of 0.75% or less. Final Act. 12. The Examiner
found Higashi discloses obtaining effluent having 0.3% sulfur and Morel
discloses a reduction in sulfur content from 5.39 wt% to 0.9 wt%. Id. at 12–
13, citing Higashi, Table 3; Morel Table 1c, col. 14, ll. 20–40. The
Examiner found Colyar, Higashi, and Morel all disclose treating feeds for
the purpose of removing impurities, including sulfur. Id. at 13. The
Examiner determined it would have been obvious to design the catalyst,
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operating conditions, and series of reactors to achieve the desired quality
product, including the sulfur content. Id. The Examiner determined Morel
and Higashi provide for such a reduction in sulfur content. Id.

Appellant’s contentions
Appellant relies on the alleged deficiencies of Colyar discussed above,
and further argues that the combined teachings of Colyar, Higashi, and
Morel do not disclose a fuel oil produced via fractionation of a second
ebullated bed hydrocracking reaction system effluent has a sulfur content of
0.75% or less. Appeal Br. 20–21.

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that a sulfur content of 0.75% or less as recited in claim 20 would
have been obvious over Colyar, Higashi, and Morel?

Discussion
We are not persuaded by Appellant’s arguments against Colyar and
Higashi as discussed above. Although Appellant contends the sulfur content
recited in claim 20 is not disclosed by the prior art, Appellant does not
address the Examiner’s rationale regarding modifying the disclosed systems
in order to obtain the desired sulfur content such as disclosed in Higashi and
Morel falling within the claimed range.
Accordingly, we affirm the Examiner’s rejection.

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Claims 2, 3, 8, 9, 13, and 14
Claims 2 and 3
Claim 2 depends from claim 1 and recites the process of claim 1
further comprises “mixing the asphalt fraction with a diluent to form a
diluted asphalt fraction prior to the contacting.” Claim 3 recites specific
diluents. Appeal Br. 29.
The Examiner explained that Morel and Colyar disclose treating the
same asphalt streams in the same ebullated bed hydroconversion reactor
under overlapping conditions to achieve conversion of the asphalt through
hydrocracking. Ans. 23. The Examiner found Morel teaches wherein the
asphalt may be treated alone as in Colyar and where the asphalt may be
treated with diluent. Id.; Final Act. 11. The Examiner found Colyar
recognizes that co-processing allows conversion of a second feed,
acknowledging that such recognition is with respect to the deasphalted oil
reactors. Id. The Examiner determined it would have been obvious to
process a blend of asphalt with a second feedstock/diluent in the asphalt
ebullated-bed reactor of Colyar to do no more than obtain the predictable
results of increasing the effluent produced by simultaneous hydroconversion
of the asphalt and additional feed as known in the art. Id.; Final Act. 11–12.
Appellant argues the Examiner asserts that process steps are arbitrary
and may be placed in order to fulfill a desired need, whereas the
arrangement of process steps must be given the appropriate inventive weight
by Examiner in view of the expert declaration. Appeal Br. 22.
We are not persuaded by Appellant’s argument because it does not
meaningfully explain why the Examiner’s rationale is insufficient.

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Claims 8, 13, and 14
The Examiner relies on similar rationale in order to reject claims 8,
13, and 14, as discussed above with respect to claim 20. Final Act. 12–13,
Ans. 23.
Appellant contends the Examiner’s reliance on Morel for the
limitations of these claims is based on improper hindsight, where the process
steps and conditions are arbitrary and may be placed in any order to fulfill a
desired need. Appeal Br. 23.
We are not persuaded by Appellant’s contentions for similar reasons
as discussed above with respect to claim 20. Appellant does not
meaningfully discuss the Examiner’s rationale with particular reference to
the limitations found in claims 8, 13, and 14.

Claim 13
Claim 13, depends from claim 4, and additionally recites “wherein a
fuel oil produced via the fractionation of the second ebullated bed
hydrocracking reaction system effluent has a sulfur content of 0.75 wt% or
less.”
Appellant additionally contends the vacuum distillate and residual
fraction of Morel is not comparable to the claimed fuel oil because the base
for heavy fuel oil contains multiple fractions. Id. at 24. Appellant argues
that even if Morel discloses a sulfur content of 0.9 wt%, Morel does not
disclose a sulfur content of a fuel oil produced via fractionation of a second
ebullated bed hydrocracking reaction system effluent. Id.
We are not persuaded by Appellant’s argument, because as the
Examiner explains, when the same deasphalted oil feed is treated in the same
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series of beds under the same conditions, the same sulfur removal would be
expected to occur. Ans. 24. Moreover, we agree with the Examiner that it
would have been obvious to have selected particular operating conditions
from the disclosures of Colyar and Higashi in order to achieve the desired
quality product where such prior art discloses operating beds specifically for
the removal of sulfur compounds. Id.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 7, 10–
12, 15–19,
21, 22
103 Colyar, Higashi 1, 4, 7, 10–
12, 15–19,
21, 22

2, 3, 8, 9,
13, 14, 20
103 Colyar, Higashi,
Morel
2, 3, 8, 9,
13, 14, 20

Overall
Outcome
1–4, 7–22
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED