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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`
`
`UNITED LABORATORIES INTERNATIONAL, LLC
`
`Petitioner
`
`v.
`
`REFINED TECHNOLOGIES, INC.,
`Patent Owner
`
`________________________
`
`
`Case No.: IPR2019-01544
`Patent No. 9,017,488
`________________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`
`
`
`TABLE OF CONTENTS
`
`PAGE
`RELATED MATTERS ................................................................................... 1
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`III. TECHNOLOGICAL BACKGROUND .......................................................... 4
`IV. CLAIM CONSTRUCTION ............................................................................ 9
`V.
`PETITIONER HAS FAILED TO IDENTIFY CLAIM ELEMENTS
`IN THE PRIOR ART....................................................................................... 9
`A. All Claims: “(iii) volatilizing non-aqueous solvent from the
`non-aqueous solvent source in water-free carrier gas from the
`carrier gas source and delivering the carrier gas containing the
`volatilized non-aqueous solvent to the process system” ....................... 9
`B. All Claims: “(iv) removing said contaminant out of said system,
`wherein a substantial amount of said contaminant is dissolved
`in said solvent in a vapor or liquid state as it is being removed
`from said system” ................................................................................ 13
`VI. PETITIONER FAILS TO EXPLAIN HOW ALLEN IS
`ANALOGOUS ART ..................................................................................... 13
`VII. PETITIONER MISCHARACTERIZES THE PERSON OF
`ORDINARY SKILL IN THE ART ............................................................... 16
`VIII. PETITIONER’S ASSERTED GROUNDS ARE THE RESULT OF
`HINDSIGHT REASONING AND FAIL TO IDENTIFY
`MOTIVATIONS TO COMBINE IN THE MANNER CLAIMED .............. 19
`A.
`Petitioner’s analysis rests on an overly broad characterization of
`the teachings in Foutsitzis and Allen .................................................. 20
`Petitioner’s obviousness analysis is based on impermissible
`hindsight reasoning, using the claims as a blueprint, and fails to
`identify appropriate reasons to combine. .......................................... 222
`
`B.
`
`i
`
`
`
`C.
`
`E.
`
`Petitioner fails to articulate a reason to combine the references
`in the manner claimed, but instead provides non-specific, plain
`vanilla motivations to improve the prior art. ....................................... 24
`D. Wilhite’s reference to the Applicant’s disclosures of prior art is
`irrelevant .............................................................................................. 25
`Petitioner’s reliance on Jansen in Ground II suffers from the
`same fatal flaws ................................................................................. 266
`IX. PETITIONER FAILS TO EXPLAIN WHY THE BOARD SHOULD
`CONSIDER THE PREVIOUSLY CONSIDERED PRIOR ART
`UNDER THE BECTON, DICKINSON FACTORS ...................................... 26
`CONCLUSION .............................................................................................. 27
`
`X.
`
`ii
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`
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`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................... 22
`Interconnect Planning Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) .......................................................................... 22
`In re Bigio,
`381 F. 3d 1320 (Fed. Cir. 2004) ....................................................... 13, 14, 15, 16
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 14
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................ 16
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ................................................................ 16, 22, 24
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .......................................................................... 23
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) .......................................................................... 22
`Interconnect Planning Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) .......................................................................... 22
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 22, 23, 24, 25
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-00582, Paper 34 (Aug. 5, 2019) .......................................................... 20
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, Paper 9 (Oct. 16, 2018) ........................................................... 20
`
`
`
`iii
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`
`
`
`STATUTES
`
`STATUTES
`35 U.S.C. § 103 ........................................................................................................ 16
`35 U.S.C. § 103 ........................................................................................................ 16
`35 U.S.C. § 325(d) ................................................................................................... 26
`35 U.S.C. § 325(d) ................................................................................................... 26
`
`iv
`
`iV
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`PATENT OWNER’S EXHIBIT LIST
`Description
`
`Exhibit
`Number
`2001 United States Patent No. 8,668,823
`
`2002 United States Patent No. 6,893,475
`
`2003 United States Publication No. 2003/0168383
`
`2004 United States Patent No. 3,720,602
`
`2005 United States Patent No. 4,980,046
`
`2006 United States Patent No. 5,417,846
`
`2007 United States Patent No. 4,344,841
`
`2008
`
`2009
`
`2010
`
`Bureau of Labor Statistics, Occupational Outlook Handbook,
`https://www.bls.gov/ooh/architecture-and-
`engineering/mobile/petroleum-engineers.htm, (last modified Sept. 4,
`2019)
`
`Bureau of Labor Statistics, Occupational Outlook Handbook,
`https://www.bls.gov/ooh/architecture-and-engineering/chemical-
`engineers.htm, (last modified Sept. 4, 2019)
`
`Bureau of Labor Statistics, OCCUPATIONAL OUTLOOK HANDBOOK,
`https://www.bls.gov/ooh/architecture-and-engineering/ mechanical-
`engineers.htm, (last modified Sept. 4, 2019)
`
`v
`
`
`
`
`I.
`
`RELATED MATTERS
`Petitioner filed a petition for inter partes review of United States Patent No.
`
`8,480,812 (“the ’812 Patent”) on August 23, 2019, the same day that Petitioner
`
`filed the petition for inter partes review of United States Patent No. 9,017,488
`
`(“the ’488 Patent”). The ’488 Patent is a continuation of Application No.
`
`13/936,807, which is a continuation-in-part of the application that issued as the
`
`’812 Patent. The proceeding number for the ’812 Patent is IPR2019-01540.
`
`Patent Owner filed suit against Petitioner on November 27, 2019 in the
`
`Southern District of Texas (Houston Division), alleging infringement of the ’488
`
`Patent. That case is styled Refined Technologies, Inc. v. United Laboratories
`
`International, LLC, Civil Action No. 4:19-cv-4676.
`
`II.
`
`INTRODUCTION
`The ’488 Patent is directed to methods for decontaminating chemical plants
`
`or refineries so that workers can safely repair or replace equipment and materials,
`
`like reactor catalysts. Generally, a mixture of inert carrier gas and
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`volatilized/vaporized1 non-aqueous solvent is delivered to a process system (e.g., a
`
`reactor). The mixture disperses the solvent throughout the equipment in the
`
`
`1 The terms volatilize and vaporize are interchangeable and used interchangeably
`
`herein.
`
`1
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`
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`process system and dissolves liquid and gaseous contaminants, which are then
`
`removed from the process system. This decontamination method makes the
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`process system safer for workers to perform maintenance tasks.
`
`The Petition advances two grounds to invalidate the ’488 Patent based
`
`primarily on the combination of prior art references Allen and Foutsitzis. The
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`grounds are deficient for a number of reasons.
`
`First, the grounds fail to identify in the combination of Foutsitzis and Allen
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`certain elements found in all claims of the ’488 Patent, including (a) delivering to a
`
`process system a mixture of inert carrier gas and non-aqueous volatilized solvent
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`(hereafter “a carrier gas-volatilized solvent mixture”), and (b) removing liquid or
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`gas contaminants from a system that are dissolved in the carrier gas-volatilized
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`solvent mixture.
`
`Second, the grounds fail to explain how Allen, which teaches methods for
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`extracting petroleum from a well in the field of petroleum engineering (known in
`
`the industry as “Upstream” technology), is analogous art to the ’488 Patent, which
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`teaches methods of decontaminating refinery equipment in the field of chemical
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`engineering (known in the industry as “Downstream” technology). Petitioner’s
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`failure to explain how Allen qualifies as “analogous art” is fatal to all grounds in
`
`the Petition.
`
`Third, the Petition mischaracterizes the person of ordinary skill in the art
`
`2
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`
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`(“POSITA”) as having a degree in “Chemical, Mechanical, or Petroleum
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`Engineering.” The ’488 Patent teaches chemical processes for decontaminating
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`refinery or chemical equipment, which is in the field of chemical engineering, i.e.
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`Downstream technology. The ’488 Patent is not related to mechanical engineering,
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`which pertains to the design and use of machines, or petroleum engineering, which
`
`pertains to the extraction of hydrocarbons from wells, i.e. Upstream technology.
`
`Chemical, mechanical, and petroleum engineering are three vastly different
`
`branches of engineering. Petitioner is over broadly characterizing the POSITA so
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`that it can rely on Allen, which is in the field of petroleum engineering. This is
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`improper and fatal to the petition.
`
`Fourth, the grounds fail to explain why a person of skill in the art would
`
`have been motivated to combine Foutsitzis with Allen. Foutsitzis is in the field of
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`chemical engineering, disclosing methods for purging sulfur contaminants from a
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`refinery system, which is a mechanically contained, computer-controlled
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`environment. Allen is in the field of petroleum engineering and teaches methods
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`for extracting petroleum from tar sand deposits in the ground, which is a
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`geologically contained, naturally fluctuating environment. Petitioner does not
`
`explain why a person of skill in one particular field would combine these methods
`
`that are implemented in entirely different fields of endeavor and environments and
`
`serve entirely different purposes. Instead, Petitioner’s sole argument that these
`
`3
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`
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`references should be combined is limited to a single paragraph that over-broadly
`
`and incorrectly characterizes the field of endeavor, is conclusory, and is infected
`
`with hindsight reasoning.
`
`Fifth, the Petition does not mention that Foutsitzis and a third reference it
`
`relies on, Jansen, were both base references relied upon by the Examiner in
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`rejecting the application for the ’488 Patent, much less explain why the Board
`
`should reconsider those two references under the Becton Dickinson factors.
`
`For the foregoing reasons, Patent Owner respectfully requests the Board
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`deny institution of the Petition.
`
`III. TECHNOLOGICAL BACKGROUND
`The Background section of the ’488 Patent explains that the disclosure
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`“pertains to the operation and maintenance of chemical plants and refineries,”
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`specifically “the process for cleaning the internal surfaces of chemically
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`contaminated reactors, packed beds, absorbent chambers, compressors, pipes,
`
`connectors and other equipment.” ’488 Patent (Ex. 1001) at 1:8-13.
`
`Refineries and chemical plants perform a wide variety of chemical reactions.
`
`For example, in a hydrotreating system in a petroleum refinery,
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`hydrodesulfurization is a catalytic chemical process used to remove sulfur from
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`refined petroleum products like fuels. See U.S. Patent No. 8,668,823 (Ex. 2001) at
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`3:1-7. This process results in the reduction of sulfur dioxide emissions when these
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`4
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`
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`fuels are later used by consumers. See U.S. Patent No. 6,893,475 (Ex. 2002) at
`
`1:31-38. A typical hydrotreating processing unit in a petroleum refinery has
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`numerous pieces of equipment, including a reactor with a metal catalyst, a
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`hydrogen compressor, shell and tube heat exchangers, a heater, air cooled fin tube
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`exchangers, piping, and other pressure vessels. Ex. 1001 at 1:60-66. These vessels
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`are all part of a “reactor circuit.” Id. at 1:67-2:1.
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`In hydrodesulfurization, a feedstock (e.g., refined petroleum) is pumped into
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`a reactor circuit and mixed with hydrogen gas at high pressure to form a vapor
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`stream. See U.S. Pub. No. 2003/0168383 (Ex. 2003) at [0003]. The vapor stream
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`flows over the catalyst where the hydrodesulfurization reaction takes place,
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`removing sulfur from the vaporized petroleum. See U.S. Patent No. 3,720,602 (Ex.
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`2004) at 1:24-35. The hot reaction products are then cooled down with water,
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`undergo a pressure reduction, and finally the liquid is separated from the gas in a
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`separator. See id. at 3:41-4:2. The hydrogen sulfide is removed from the hydrogen
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`gas, and the hydrogen gas is then recycled for use. See id.; see also U.S. Patent
`
`No. 4,980,046 (Ex. 2005) at 2:21-28. The hydrogen sulfide-free petroleum is then
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`distilled to its final pure form.
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`As systems like hydrotreating systems are continuously used, dangerous
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`contaminants, like noxious gases, benzenes, and hydrogen sulfide, accumulate in
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`the equipment of the system. Ex. 1001 at 4:17-25; see also U.S. Patent No.
`
`5
`
`
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`5,417,846 (Ex. 2006) at 1:32-37; U.S. Patent No. 4,344,841 (Ex. 2007) at 1:14-20.
`
`Periodically, refineries or plants must perform what is called a “turnaround” to
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`replace catalysts or other media that have become fouled and therefore lost their
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`ability to perform. Ex. 1001 at 1:14-19. During a turnaround, the plant or refinery
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`has to be shut down, which normally results in significant revenue losses. Id. at
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`1:20-23. Initially, the equipment must be purged of the dangerous contaminants so
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`that the operators can safely remove and replace the catalyst or other media. Id. at
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`1:14-19, 6:9-14. There is a strong incentive to optimize that decontamination
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`process so that the refinery or plant is shut down for the shortest duration possible.
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`Id. at 1:23-26.
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`A number of prior art turnaround decontamination methods existed before
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`the ’488 Patent, but they all have significant drawbacks.
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`In one decontamination method called a “hot sweep,” the heater in the
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`reactor circuit raises the hydrogen stream temperature to a high enough level to
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`strip heavy hydrocarbons from a reactor catalyst as the compressor circulates the
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`hydrogen. Id. at 2:20-25. Next, the hydrogen is replaced with nitrogen by
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`repetitively depressurizing the flare system and then pressuring it back up with
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`nitrogen in a process called a “huff and puff.” Id. at 2:25-28. Nitrogen is injected
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`into the circuit and simultaneously purged, which decreases the concentration of
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`contaminants in the circuit, like noxious gases, and cools down the reactor. Ex.
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`6
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`
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`1001 at 2:28-33. This method is costly and can take numerous days to complete.
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`Id. at 2:37-41.
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`As another example of a prior art turnaround method, contaminated catalysts
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`can be removed by a “wet dump.” Id. at 2:48-50. In this method, the equipment is
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`cooled down and the reactor is filled with water. Id. at 2:50-51. The catalyst is
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`removed while wet, which prevents fires. Id. at 2:51-52. This method is time-
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`consuming due to the time it takes to cool down the reactor, and it requires
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`complicated safe handling and disposal of large amounts of water filled with hot
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`catalyst and metals. Id. at 2:52-57.
`
`The ’488 Patent teaches a novel process for decontaminating equipment in a
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`refinery or chemical plant, which has the advantages of reducing the overall
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`turnaround time, decreasing costs, enhancing safety, and avoiding problems
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`associated with using water. In one embodiment, a gas source heats and injects an
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`inert gas into a process system, which can be an entire reactor circuit or just a
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`reactor. Id. at 5:4-9, 8:56-67. The gas can be heated in the range from 180°F to
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`400°F. Ex. 1001 at 8:60-62. The gas can be selected from a variety of inert gases,
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`including but not limited to nitrogen, hydrogen, ethane, or methane. Ex. 1001 at
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`4:6-16. As the heated inert gas is pumped through the process system, a non-
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`aqueous solvent from a solvent source is injected into the carrier gas stream in the
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`process system. Id. at 4:40-55, 9:8-11. Any non-aqueous solvent can be used in
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`7
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`
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`the process, including but not limited to terpene, aromatic solvents (e.g., toluene,
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`xylene), naptha, and hexanes. Id. at 5:41-58. As the solvent enters the heated
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`carrier gas stream, the solvent volatilizes/vaporizes from a liquid into a gas to
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`create a carrier gas-volatilized solvent mixture. Id. at 3:30-37, 3:49-62.
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`The carrier gas-volatilized solvent mixture is pumped through the reactor
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`circuit. Id. at 3:30-37. As the mixture flows through the process system the
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`solvent contacts the surfaces of the equipment in the system, such as reactors,
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`catalysts, molecular sieves, adsorbant chambers, shell and tube heat exchangers,
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`piping, pressure vessels, etc. Id. at 3:32-34, 5:25-40. Upon contact with the
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`equipment, the solvent dissolves contaminants on the surfaces of the equipment.
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`Ex. 1001 at 3:34-38. Contaminants may include but are not limited to liquid
`
`contaminants like crude oil or hydrocarbons, as well as gaseous contaminants such
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`as noxious gases like hydrogen sulfide, benzene, carbon monoxide, and light end
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`hydrocarbons. Id. at 4:17-25. Ultimately, the carrier gas-volatilized solvent
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`mixture carries the dissolved contaminants away from the equipment and out of the
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`process system. Id. at 3:49-62, 4:17-18.
`
`The ’488 Patent describes a number of key advantages of the disclosed
`
`process system over the prior art.
`
`First, the disclosed delivery method is more effective at removing the
`
`contaminants from the system than prior art methods, which improves safety for
`
`8
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`
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`the operators when they later remove the catalyst or other media from the system.
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`Id. at 6:9-29. Second, because the process uses a volatilized solvent, the delivery
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`method can reduce the decontamination process in a turnaround by several hours
`
`or even days, which ultimately gets the system back up and running faster and
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`reduces loss revenue. Id. at 6:30-40. Third, the decreased time to decontaminate
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`the system reduces costs, because it requires less manpower and materials. Id. at
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`6:41-49.
`
`IV. CLAIM CONSTRUCTION
`Petitioner has offered several claim constructions in the Petition. See
`
`Petition at 13-19. Patent Owner does not believe Petitioner’s proposed terms need
`
`to be construed for the Board to render a decision on the Petition. However, Patent
`
`Owner reserves the right to contest Petitioner’s proposed constructions should the
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`Board institute the inter partes review proceedings.
`
`V.
`
`PETITIONER HAS FAILED TO IDENTIFY CLAIM ELEMENTS IN
`THE PRIOR ART
`A. All Claims: “(iii) volatilizing non-aqueous solvent from the non-
`aqueous solvent source in water-free carrier gas from the carrier
`gas source and delivering the carrier gas containing the volatilized
`non-aqueous solvent to the process system”
`
`Petitioner alleges that Allen and Foutsitzis teach different pieces of this
`
`element, which is in all claims of the ’488 Patent. But Petitioner’s allegation is
`
`flawed and it has failed to show that this element is in the combination of the prior
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`9
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`
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`art.
`
`Before turning to Petitioner’s argument, a summary of Foutsitzis and Allen
`
`is helpful.
`
`Foutsitzis teaches a process for purging contaminants from a conversion
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`system in a plant, which can include numerous pieces of integrated equipment like
`
`reactors, vessels, heat exchangers, pumps, etc. Foutsitzis (Ex. 1003) at 3:19-
`
`35. During a conversion process, sulfur compounds can build up in the conversion
`
`system and accumulate on the equipment causing catalyst deactivation. Id. at 3:64-
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`4:46. Foutsitzis offers a solution to purge the contaminants. Id. at 4:47-68. In one
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`embodiment, a liquid hydrocarbon solvent is introduced into the conversion system
`
`at certain conditions. Id. at 4:47-54. In an alternative embodiment, inert gases,
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`such as hydrogen or nitrogen, are circulated along with the solvent to improve
`
`contact between the solvent and equipment. Id. at 4:63-68. Foutsitzis explains this
`
`latter embodiment in further detail in Example II, where liquid toluene was
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`pumped through the system to purge sulfur contaminants. Id. at 9:31-34. After the
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`solvent removed most of the sulfur contaminants, nitrogen gas was injected
`
`through the system with toluene. Id. at 9:34-41. The nitrogen flow increased the
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`velocity and turbulence of the liquid toluene circulation in the system, ensuring
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`that the remaining sulfur was purged out of the system with the toluene. Id. at
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`9:34-43.
`
`10
`
`
`
`In a completely different field, Allen teaches methods for recovering
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`petroleum from underground geological formations like tar sands. Allen (Ex.
`
`1004) at 1:8-15. A carrier gas such as nitrogen “is brought in contact with and
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`vaporizes an effective solvent…” Id. at 3:36-40. The solvent is one that is in the
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`liquid state at the underground formation conditions, such as pentane, hexane, etc.
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`Id. at 2:66-3:1. The mixture of carrier gas and vaporized solvent is injected into
`
`the formation and flows through flow channels in the formation. Id. at 4:27-36.
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`When the solvent contacts viscous petroleum it is absorbed by the petroleum and
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`reduces the viscosity of the petroleum. Id. at 4:37-48. This causes the petroleum
`
`to flow more freely and it is driven out of the well by injection of the carrier gas.
`
`Id.
`
`Petitioner suggests that Allen teaches “volatilizing non-aqueous solvent
`
`from the non-aqueous solvent source in water-free carrier gas from the carrier gas
`
`source…” Petition at 24-25. Petitioner also admits that “Allen, however, does not
`
`disclose delivery to the system…” Id. Petitioner tries to fill this gap with
`
`Foutsitzis, arguing that it teaches that an inert gas is used to enhance the
`
`effectiveness of the solvent, and thus, it is used to deliver the solvent to the
`
`system.” Id. at 25. Petitioner’s confusing argument is flawed on at least two
`
`grounds.
`
`First, if Petitioner is arguing that Foutsitzis teaches delivering a carrier gas-
`
`11
`
`
`
`volatilized solvent mixture to a process system, that argument is wrong. In
`
`Foutsitzis, the equipment in the system is flooded with liquid toluene until most of
`
`the contaminant sulfur is removed. Ex. 1003 at 9:31-34. Next, nitrogen is pumped
`
`with the toluene to increase the velocity and turbulence of the liquid toluene to
`
`“ensure[] sulfur cleanout.” Id. at 9:34-43. In other words, Foutsitzis does not
`
`volatilize its solvent—it is always in liquid form. Thus, Foutsitzis does not
`
`disclose a carrier gas-volatilized solvent mixture, much less delivery of that
`
`mixture to a process system.
`
`Second, if Petitioner is arguing that element (iii) is in the prior art because
`
`Allen discloses creating a carrier gas-volatilized solvent mixture, and Foutsitzis
`
`discloses using an inert gas to deliver a liquid solvent to a process system, that
`
`argument suffers from classic picking apart of a process. Element (iii) does not
`
`recite creating a carrier gas-volatilized solvent mixture, and also delivering a
`
`solvent to a process system. It specifically requires delivering the carrier gas-
`
`volatilized solvent mixture to the process system. Petitioner has failed to argue the
`
`prior art teaches this specific requirement. Petitioner must show that Allen and
`
`Foutsitzis, alone or in combination, teach delivering a carrier gas-volatilized
`
`solvent mixture to a process system. Petitioner must also explain why a POSITA
`
`would isolate one step in Allen’s multi-step process used in a tar sand environment
`
`and add that one step to Foutsitzis’ process used in a refinery environment.
`
`12
`
`
`
`Petitioner has not explained any of those points.
`
`Petitioner’s failure to map element (iii) to the prior art is fatal to its Petition
`
`and the Board should thus deny institution.
`
`B. All Claims: “(iv) removing said contaminant out of said system,
`wherein a substantial amount of said contaminant is dissolved in
`said solvent in a vapor or liquid state as it is being removed from
`said system”
`
`Petitioner alleges that Foutsitzis teaches this element because it discloses
`
`that contaminants purged from the conversion system can be removed from a
`
`liquid organic solvent via distillation. Petition at 26. That is not what this element
`
`requires. Element (iv) requires removal of liquid or vapor contaminants dissolved
`
`in “said solvent,” which by antecedent basis to element (iii) is the delivered
`
`volatilized solvent (not a liquid solvent). Petitioner has failed to show the element
`
`(iv) removal process is in the art, and thus its Petition should be denied.
`
`VI. PETITIONER FAILS TO EXPLAIN HOW ALLEN IS ANALOGOUS
`ART
`“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art
`
`for an obviousness determination only when analogous to the claimed invention.”
`
`In re Bigio, 381 F. 3d 1320, 1325 (Fed. Cir. 2004) (emphasis added). In order for a
`
`reference to be analogous, it must be: (1) from the same field of endeavor as the
`
`claimed invention (even if addressing a different problem); and/or (2) reasonably
`
`pertinent to the problem faced by the inventor (even if from a different field of
`
`13
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`
`
`endeavor). Id. A reference is reasonably pertinent if “it is one which, because of
`
`the matter with which it deals, logically would have commended itself to an
`
`inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659
`
`(Fed. Cir. 1992). “If a reference disclosure has the same purpose as the claimed
`
`invention, the reference relates to the same problem, and that fact supports use of
`
`that reference in an obviousness rejection.” Id.
`
`The Petition fails to show how Allen is analogous art that can be considered
`
`in an obviousness determination.
`
`With respect to In re Bigio prong (1) above—the “field of endeavor”—the
`
`Petition and Mr. Wilhite’s expert declaration allege that Allen “is directed to a
`
`method of recovering viscous petroleum using a carrier gas vaporized solvent
`
`flooding method.” Petition at 20; Wilhite Decl. ¶ 39. Then they state that
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`“Because Allen is directed to the removal of hydrocarbons from porous media in
`
`the form of petroleum-containing formations using a vapor flow comprised of
`
`carrier gas and vaporized solvent, this reference relates to the field of patentee’s
`
`endeavor…. Id. This argument suffers from numerous flaws.
`
`First, Petitioner’s characterization of the field as “the removal of
`
`hydrocarbons from porous media” is transparently over broad. The field is not the
`
`removal of hydrocarbons from porous media, it is the decontamination of refinery
`
`or chemical plant equipment and materials, like reactor catalysts.
`
`14
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`
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`Second, the Petitioner’s argument is conclusory. Neither the Petition nor
`
`Mr. Wilhite’s declaration explain how Allen’s teachings of extracting
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`hydrocarbons from porous media “in the form of petroleum-containing formations”
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`relates to decontaminating a petroleum refinery or chemical plant.
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`Third, the Petition and Mr. Wilhite’s declaration merely conclude Allen is
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`‘related’ to the field of endeavor. But the prong (1) test under In re Bigio is
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`whether Allen is in the “same” field of endeavor, not a related field of endeavor.
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`Allen and Foutsitzis are not in the “same” field of endeavor. Allen teaches
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`Upstream technology, specifically an extraction method applied in a well
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`formation, which is an underground naturally fluctuating environment at formation
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`(uncontrolled) temperature and pressure. Foutsitzis teaches Downstream
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`technology, specifically a decontamination method applied in refinery equipment,
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`which is a closed environment with fluctuating and elevated (controlled)
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`temperatures and pressures. As a matter of common sense, these substantially
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`different environments will necessarily require substantially different methods and
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`considerations. In fact, the industry unequivocally characterizes methods like
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`those in Allen and Foutsitzis as falling into substantially different fields of
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`endeavor: Allen’s methods (extracting petroleum from wells) fall within the field
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`of petroleum engineering, while Foutsitzis’ methods (maintaining petroleum
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`refinery equipment) fall within the field of chemical engineering. Occupational
`
`15
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`
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`Outlook Handbook – Petroleum Engineering, (Ex. 2008); Occupational Outlook
`
`Handbook – Chemical Engineering, (Ex. 2009).
`
`With respect to In re Bigio prong (2) above—being “reasonably pertinent to
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`the problem”—the Petition and Mr. Wilhite’s declaration include a footnote merely
`
`stating that if the prior art references are not related to the same field of endeavor,
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`“Allen is at least reasonably pertinent to the problem addressed in the ’488 Patent.”
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`Petition at 20 n.3; Wilhite Decl. ¶ 39 n.6. This conclusory statement is clearly not
`
`sufficient for Petitioner to establish Allen is analogous art. There is not even an
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`attempt to provide an explanation to support that conclusion so that one can
`
`evaluate it.
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`The Petition offers no other argument to support that Allen is analogous art.
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`For this reason, the Board should deny institution.
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`VII. PETITIONER MISCHARACTERIZES THE PERSON OF
`ORDINARY SKILL IN THE ART
`The Federal Circuit defines a POSITA as “a hypothetical person who is
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`presumed to know the relevant prior art.” In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995). The Board must assess the prior art through the lens of the
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`POSITA. See In re Kahn, 441 F.3d 977, 985-87 (Fed. Cir. 2006); 35 U.S.C. § 103.
`
`The Petition and Wilhite’s expert declaration characterize the relevant field
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`as “stripping (or removing) hydrocarbons from porous media using a vapor flow
`
`comprised of volatilized solvent(s) and/or carrier gas.” Petition at 13; Wilhite
`
`16
`
`
`
`Decl. at ¶ 22. Again, the field is not the removal of hydrocarbons from porous
`
`media. That is not a field. It is so broad that it does not define any field. It is like
`
`saying cars, bicycles, and rockets are in the same field of transportation. Here, the
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`field is the decontamination of refinery or chemical plant equipment and materials,
`
`like reactor catalysts. Wilhite notes that the Applicant disclosed references to the
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`Examiner relating to petroleum recovery. Wilhite Decl. at ¶ 22. The Petitioner is
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`grasping at straws. The references that the Applicant disclosed out of caution and
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`under its duty of candor do not establish the relevant field in an invalidity analysis,
`
`and neither the Petitioner nor Wilhite has cited any law to suggest otherwise. In
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`any event, the references are so far removed that neither the Patent Office, the
`
`Petitioner, or its expert relied on them.
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`The Petitioner and Wilhite state that the POSITA in this case would have a
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`B.S. degree in chemical, mechanical, or petroleum engineering or “at least 3 to 5
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`years of experience in one or more of the above industries….” Petition at 13;
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`Wilhite Decl. ¶ 23. This is a grossly over-broad characterization of the relevant
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`field and POSITA. Again, the field is not the removal of hydrocarbons from
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`porous media, it is the decontamination of refinery or chemical plant equipment
`
`and materials, containing reactor catalysts. Further, chemical, mechanical, and
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`petroleum engineering are three vastly different fields of engineering. Chemical
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`engineering is concerned with the design and operation of chemical plants and
`
`17
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`
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`running chemical processes. Ex. 2009. Mechanical engineering concerns the
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`design, construction, and use of machines. Occupational Outlook Handbook –
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`Mechanical Engineering, (Ex. 2010). Petro
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