Ex Parte 7497943 et al

Patent Trials and Appeals BoardSep 12, 2014

95001399 - (R) (P.T.A.B. Sep. 12, 2014)

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. 95/000,524 12/12/2009 7497943 IND4-29741-USRX 9423 87884 7590 05/15/2015 Mossman, Kumar and Tyler, PC P.O. Box 421239 Houston, TX 77242 EXAMINER KUNZ, GARY L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/15/2015 PAPER 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. PTOL-90A (Rev. 04/07) 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. 95/001,399 07/16/2010 7497943 IND4-29741-USRX-1 5884 87884 7590 05/15/2015 Mossman, Kumar and Tyler, PC P.O. Box 421239 Houston, TX 77242 EXAMINER KUNZ, GARY L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/15/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NALCO COMPANY Requester and Respondent v. BAKER HUGHES, INC. Patent Owner and Appellant ____________ Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B21 Technology Center 3900 ____________ Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING This is a Request for Rehearing (“Req. Reh’g”) by Patent Owner under § 41.79(a)(1) of the Decision of the Patent Trial and Appeal Board (“the Board”) dated Sept. 15, 2014 (“Dec. App.”) which affirmed the Examiner’s rejections of claims 1, 5, 6, 17, 26, and 30–32 as obvious under 35 U.S.C. § 103(a) in view of 1 “The ’943 patent” or “Nguyen ’943.” Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 2 Reynolds ’463 and Hart, and of claims 1, 17, 26 and 32 as obvious under 35 U.S.C. § 103(a) in view Patent Owner Admissions and Hickok. The Request for Rehearing is denied. Patent Owner requests rehearing regarding six points said to have been misapprehended and/or overlooked in the Decision. Req. Reh’g 1. 1. Did the Board misapprehend the closed “consisting of” claim language with respect to Hickok? Patent Owner contends the Board “misapprehended the closed ‘consisting of’ language of the Nguyen ’943 claims.” Req. Reh’g 2. Patent Owner argues that the “‘consisting of’ language of the Nguyen ’943 Patent does not permit the contacting of the crude oil with an oxygen-containing gas or the presence of peroxides in the crude oil, as required by the disclosure of Hickok.” Id. We do not agree. Hickok expressly teaches that “it may not be necessary to add oxygen in which case the feed oil is passed directly to treating zone 10 by means of lines 14 and 15.” Hickok, col. 2, ll. 54–64. Consequently, Patent Owner’s argument that oxygen-containing gas is required by Hickok, yet excluded by the “consisting of” language recited in claim 1, is unavailing. Patent Owner also argues that there is no data or examples in Hickok of using a carboxylic acid in the absence of peroxides. Req. Reh’g 3. Hickok teaches the peroxides are formed in hydrocarbon mixtures. Hickok, col. 1, ll. 19–20, 34–35, and 41–42. Hickok teaches that the peroxides: can be removed selectively by an acid treatment according to the process of the present invention; but in the preferred modification of the process, the formation of the most easily formed and most objectionable peroxides is purposely promoted prior to their removal, Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 3 so that thereafter the treated gasoline has improved stability in storage. Id. at col. 1, ll. 47–54. Hickok does not disclose that the presence of peroxides is necessary for its acid treatment to work. Rather, Hickok simply teaches that acid treatment removes peroxides which are formed in the gasoline. Thus, there is insufficient evidence that peroxides are necessary to Hickok’s process, rather than being a contaminant that is removed by acid treatment. In addition to this, we do not agree that the “consisting” of language excludes peroxides from the hydrocarbon because “hydrocarbon phase” appears in the claim preamble prior to the recitation of “consisting of.” 2. Did the Board overlook the fact that Patent Owner Admissions are not prior art? Claim 1 has four steps: 1) adding a water soluble hydroxyacid to wash water in a refinery desalting process; 2) lowering the pH of the wash water to a pH of 6 or below; 3) adding the wash water to the crude oil to create an emulsion; and 4) resolving the emulsion into phases using electrostatic coalescence. Claims 1, 17, 26, and 32 stand rejected over “Patent Owner Admissions” and Hickok. The “Patent Owner Admissions” are statements made by Dr. Jerry Weers, a named inventor of the ’943 patent. Dec. App. 4. Dr. Weers testified during a hearing for a preliminary injunction in a related district court litigation that, prior to filing the ’943 patent, it was known to add an acid to wash water prior and that it was known that acid adjusts the pH. Id. at 4–5. Dr. Weers also testified that it was known to create an oil and water emulsion and to use an electrostatic field to separate the emulsion into oil and water again, steps as in 3) and 4) of the claimed method. Id. Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 4 Patent Owner contends that the “Patent Owner Admissions are not prior art as they did not exist prior to 9/1/2009, the date of the Preliminary Injunction hearing in U.S. District Court.” Req. Reh’g 4. Patent Owner also contends that admission can only be used in conjunction with a patent or printed publication, “which they are not.” Id. Patent Owner also argues that the admissions were improperly relied upon because they are not corroborated with testimony or documentary evidence. Id. These arguments are not persuasive. While the Admissions were made on Sept. 1, 2009, Dr. Weers was testifying about the state of the art prior to the filing date of the ’943 patent. Weers Transcript 37:6–12. Patent Owner did not provide arguments or evidence that this testimony did not constitute prior art to the ’943 patent. M.P.E.P. § 2617.III specifically states that admissions “by the patent owner as to any matter affecting patentability may be utilized to determine the scope and content of the prior art in conjunction with patents and printed publications, whether such admissions are found in patents or printed publications or in some other source.” In this case, Patent Owner’s admissions are combined with Hickok, which is printed prior art publication. Thus, the rejection is compliant with M.P.E.P. § 2617.III. With respect to the requirement that Dr. Weers’s testimony must be corroborated or supported by documentary evidence, the background section of the ’943 patent acknowledges that the desalting process prior to the ’943 patent involves creating an emulsion with oil and wash water, and then resolving the emulsion back into the oil and wash water phases (col. 1, ll. 43–67) as claimed and as testified by Dr. Weers, corroborating his testimony. Hickok was relied upon for teaching the addition of acid as claimed. Dec. App. 9–10. Thus, even if Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 5 corroboration is necessary, the ’943 patent provides adequate evidence to support Dr. Weers’s testimony. 3. Did the Board misapprehend the fact that Reynolds teaches away from the claimed invention? Patent Owner contends that Reynolds teaches away from making emulsions and that the Board ignored this teaching. Req. Reh’g 4–5. Specifically, Patent Owner cites the following disclosure from Reynolds ’463 as a teaching away: “One difficulty with the addition of base, however, is the formation of emulsions, which can interfere with effective separation. Therefore the most preferred pH is around 6, especially for naphthenic acid crudes.” Reynolds ’463, col. 3, ll. 33–37 (emphasis added). As stated by Requester, the skilled worker would have understood that Reynolds ’463 is not teaching away from all emulsions, but rather is teaching that stable emulsion can be difficult to resolve and that lowering the pH facilitates “effective separation.” Requester Resp’t Br. 6. The evidence supports this position. Reynolds ’463 teaches shaking the acid solution and oil and then allowing it to separate overnight. Reynolds ’463, col. 3, l. 67–col. 4 l. 1. Reynolds ’463 also teaches “the feedstock to be demetalized is intimately and thoroughly mixed with an aqueous solution of citric acid or its salts.” Id. at col. 2, ll. 5–7. Such disclosure would reasonably be understood to include emulsions since intimate and thorough mixing is characteristic of forming an emulsion. (See Dec. App. 12; RAN 23.) Furthermore, Reynolds ’463 teaches that the feed “can then be handled in the same manner as any other carbonaceous feed, and processed by conventional Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 6 hydroprocessing techniques” and that “the physical separation process” can “ordinarily to be done in a conventional crude oil desalter, which is usually used for desalting petroleum crudes prior to hydroprocessing.” Id. at. col. 2, l. 57–63. It was well known prior to filing the ’943 patent to form emulsions between the oil and water phases and then to resolve the emulsions. ’463 patent, col. 1, ll. 53–67. Thus, even if Reynolds ’463 did not produce an emulsion, emulsions were conventionally made during crude oil desalting, the same process to which Reynolds is directed, and Reynolds directs the skilled worker to use conventional hydroprocessing procedures in a conventional desalter. (See Dec. App. 13.) In addition to this, Reynolds ’463 teaches including a demulsifer. Reynolds ’463, col. 3, ll. 66–67. A demulsifer is used to break or separate an emulsion. Patent Owner remarks dated Jan. 23, 2012, pp. 45, 53, 55, and 56. Thus, rather than teach away from emulsions, Reynolds ’463 utilizes emulsions in order to perform its method. In sum, the evidence does not support Patent Owner’s position that Reynolds ’463 teaches away from using the conventional step in crude oil desalting of forming an emulsion. 4. Did the Board misapprehend the “consisting of” claim language with respect to the features required in Hart? Patent Owner argues: With respect to adding the water-soluble hydroxyacid to the wash water (Nguyen ’943) versus adding the chelant directly to the liquid hydrocarbon (Hart, noted as (b) above), the Board noted at the bottom of page 17 of the Decision that “Either step works, and with only two choices either alternative would have been obvious.” Appellant respectfully submits however, that this is still a choice to be Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 7 made and in the obviousness analysis, there must be a reason for making one choice over the other. Req. Reh’g 6. Patent Owner did not quote the full passage in which this sentence appears. In the Decision, a reason was given for adding the acid to the wash water as claimed. Significantly, the hydroxyacid in each case – Reynolds, Hart, and the claims – is still being used for the same purpose, i.e., to form a complex with iron and other contaminants in the crude oil. The evidence indicates that the acid is effective in complexing with the iron in the crude oil whether the acid is 1) introduced into the crude oil by combining it with an aqueous solution (Reynolds ’463) or 2) by direct addition (Hart). Either step works, and with only two choices, either alternative would have been obvious. Dec. App. 17 (footnote omitted) In other words, the addition of acid to the wash water is described in Reynolds ’463, and thus, it would have been obvious to have utilized this step for its known and expected properties in removing metals from a liquid hydrocarbon. pH Claim 1 recites “lowering the pH of the wash water to 6 or below.” Patent Owner argues that the Board erred finding it would have been obvious to have picked the claimed pH range. Req. Reh’g 6. Patent Owner also contends that the “addition of base taught by Reynolds ’463 is not allowed by the consisting of claim language of Nguyen ’943, and is in any event an element taught by a cited reference that one having ordinary skill in the art must consider and understand not to choose.” Id. at 6–7. Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 8 As explained in the Decision on Appeal, while Reynolds ’463 may describe addition of a base in certain embodiments, Reynolds also describes and claims a process which does not require the addition of a base. Dec. App. 15:5–12. Patent Owner did not identify a defect in these findings. With respect to the claimed pH of 6 or below, the Decision made specific findings that Hart teaches a pH of 6, and Reynolds teaches a preferred pH of 6, as well as pHs which are lower. Id. at 15. Because the claimed range overlaps with the ranges in Reynolds and Hart, it would have been obvious to have chosen it. It is well-established that, when there is a range disclosed in the prior art, and the claimed invention overlaps or falls within that range, there is a presumption of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). 5. Did the Board overlook that Hart teaches away from the claimed invention? Claim 1 requires adding the water-soluble hydroxyacid to the wash water. Patent Owner contends that the “Board misapprehended the significant teaching in Hart that adding acid to the water did not improve the extraction of iron.” Req. Reh’g 7. Patent Owner argues that the Board relied on a comparative test “where the chelant was added directly to the water [ ] phase.” Id. This comparative example shows that “addition of the organic solution of the oxalic acid to the water layer at pH 8 did not improve iron extraction.” Hart, col. 7, ll. 58–67. The Decision on Appeal did not ignore the aforementioned disclosure in Hart. We stated: Hart considered itself an improvement over Reynolds prior art process in which the hydroxyacid is added to the aqueous solution and then combined with the crude oil. It is obvious to use a prior art process, Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 9 even if such process was taught to be inferior. See [In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)]. Dec. App. 17. Patent Owner also contends that Board erred in stating “that it does not matter how the oil, water and acid come together – the end result is the same.” Req. Reh’g 8. Patent Owner argues that it does make a difference how the components come together because the chemistry is different when the acid is added directly to the hydrocarbon rather than in the wash water. Id. According to Patent Owner, when the chelate is added directly to the hydrocarbon, it is “easier to extract.” Id. Patent Owner did not provide persuasive factual evidence or testimony to support the argument that the chemistries are different. Nonetheless, even if we assume this to be the case, Patent Owner does not deny that a metal complex is formed in both Reynolds ’463 and Hart. Thus, it is still true that “the acid is effective in complexing with the iron in the crude oil whether the acid is 1) introduced into the crude oil by combining it with an aqueous solution (Reynolds ’463) or 2) by direct addition (Hart).” Dec. App. 17. While Hart’s treatment may be more effective in removing metal, it still would have been obvious to have utilized Reynolds ’463’s step of adding acid to the wash water, even if it was inferior, because it is obvious to use a known process for its expected result in chelating the metal ions. To the extent that the statement on page 17 of the Decision on Appeal could be read to say that there is no difference when the acid is added to the hydrocarbon, we withdraw such statement and do not rely upon it. Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 10 6. Secondary considerations In considering the secondary consideration, the Decision appeal concluded, based on the evidence that the “success of the claimed invention therefore appears not to be due to the merits of the claimed invention, but rather to the use of the hydroxycarboxylic acids described in Hickok and Reynolds.” Dec. Appeal 21. Patent Owner contends that the “Nguyen ’943 claims cover an entire method for the extraction of metals and amines, not just hydroxy acids. It is the entire method that is claimed and not only the acids listed in the claims.” Req. Reh’g 9. However, evidence was not provided that it was all the steps of the claimed method in combination that accounted for the commercial success, rather than just the specific hydroxyacid utilized. Specifically, the evidence shows that the claimed steps are conventionally utilized in refinery desalting process, except for the addition of a hydroxyacid. As stated in the Decision on Appeal, the amount of acid used, type of acid, the pH, and other conditions utilized in the EXCALIBUR process were not disclosed, so it could not be discerned whether it was such conditions combined that were responsible for the reported commercial success. Dec. App. 21. DENIED peb Appeal 2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2 11 Patent Owner: MOSSMAN, KUMAR AND TYLER, PC P.O. BOX 421239 HOUSTON, TX 77242 Third Party Requester: DAVIDSON , DAVIDSON & KAPPEL, LLC 485 7TH AVENUE 14TH FLOOR NEW YORK, NY 10018 K&L GATES LLP P.O. BOX 1135 CHICAGO, IL 60690