In Ex parte Nahas (Appeal 2010-005054, in Application Serial No. 11/249,814, decision issued August 24, 2011) the issue on appeal was whether the Examiner erred in determining that a person of ordinary skill in the art would have recognized the petroleum coke of Schlinger to be a suitable carbonaceous material for use in the process of Aquino.
Appellant’s invention related to “processes for converting petroleum coke to methane.” Claim 1 was illustrative and recites, inter alia, “combining petroleum coke and a catalyst having steam gasification activity in an aqueous medium to form a feed slurry; introducing said feed slurry and superheated steam into a slurry drier to produce net steam and substantially dry solid particles of petroleum coke impregnated with catalyst….”
Claim 1 was rejected by the Examiner under 35 U.S.C. 103(a) as unpatentable over Aquino in view of Nahas and further evidenced by Schlinger and Schwarz. The Examiner asserted that Aquino teaches a process similar to the Appellant’s claimed process, but admitted that Aquino “does not explicitly state petroleum coke as the solid feedstock.” However, the Examiner asserted that Aquino “discloses that the feedstock can comprise similar carbonaceous compounds to coal.” The Examiner relied on Schlinger to teach that “petroleum coke is viewed in the art as being a carbonaceous solid that is similar to coal” and reasoned that “Aquino implies the use of petroleum coke as the carbonaceous material.”
The Appellant argued against the Examiner’s position, and asserted that “petroleum coke is a derived product typically made by processing oil and oil-related products.” In addition, the Appellant argued that Aquino’s process uses “carbonaceous solids which contain volatilizable hydrocarbon constituents” and that “[p]etroleum coke is a solid end product where a very high proportion (if not substantially all) of the ‘volatile’ components have been removed.”
The Board emphasized that the Examiner bears the initial burden of establishing a prima facie case of obviousness, and cited In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Board also noted that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Board agreed with Appellant’s position that the Examiner did not adequately explain why a person of ordinary skill in the art would have used the petroleum coke of Schlinger in the process of Aquino. The Board reasoned that while the Examiner relies on Schlinger to show the interchangeability of coal and petroleum coke is known in the art, the Examiner did not adequately address Appellant’s argument that the petroleum coke lacks the volatilizable hydrocarbon content required by Aquino’s process or explain why a person of ordinary skill in the art would have reasonably expected that the petroleum coke of Schlinger would have been suitable for use as Aquino’s carbonaceous material. Thus, the Board held that the Examiner did not adequately address “why one skilled in the art would have reasonably expected that petroleum coke would contain sufficient volatilizable hydrocarbon constituents for use in Aquino’s process and therefore render the subject matter of independent Claim 1 unpatentable within the meaning of § 103(a).”