Ex Parte Bhan

Patent Trial and Appeal Board

Sep 18, 2012

11400294 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/400,294 04/07/2006 Opinder Kishan Bhan TH2882 (US) 2472
23632 7590 09/19/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
09/19/2012 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 TRAIL AND APPEAL BOARD
____________________

Ex parte Shell Oil, Inc.
(Inventor: Opinder Kishan Bhan)
____________________

Appeal 2011-003590
Application 11/400,294
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Shell Oil (Applicant) appeals from an Examiner’s decision rejecting claims
1-18. 35 U.S.C. §§ 6(b) and 134(a). Because the Examiner correctly determined
that the subject matter of Applicant’s claims would have been obvious, we affirm.
Claimed Subject Matter
Applicant claims a catalytic method for reducing the amount of alkali metal
or alkaline earth metal present as organic acid salts in crude oil. The method has
one physical step --contacting the crude oil with a catalyst. The remainder of the
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claim is directed to characterizations of the catalyst, the crude oil, and the resultant
product. Thus, the crude oil must contain at least .001% alkali or alkaline earth
metal in the form of organic salts. The treated oil must be liquid at standard
temperature and pressure and the amount of the salts must be reduced to at most
90% of the original value. The catalyst must include a metal of columns 5-10 of
the Periodic Table or a compound of those metals on a theta alumina support. The
claim also specifies that the amount of salt is determined by the standardized
ASTM test protocol D1318. The method may be carried out in the presence of
hydrogen. Spec. 10:19-20; 22:14-15; 52:17-18.
We reproduce exemplary Claim 1 (paragraphing added):
1. A method of producing a crude product, comprising:
contacting a crude feed with one or more catalysts to
produce a total product that includes the crude
product,
wherein the crude product is a liquid mixture at 25°C and
0.101 MPa,
the crude feed comprising one or more alkali metal salts
of one or more organic acids, alkaline-earth metal
salts of one or more organic acids, or mixtures
thereof,
the crude feed having, per gram of crude feed, a total
content of alkali metal and alkaline-earth metal in
metal salts of organic acids of at least 0.00001
grams, and
at least one of the catalysts is a Columns 5-10 catalyst
that comprises:
a support,
the support comprising theta alumina; and
one or more metals from Columns 5-10 of
the Periodic Table and/or one or more
compounds of one or more metals
from Columns 5-10 of the Periodic
Table; and
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controlling contacting condition temperature, pressure,
crude feed flow, or combinations thereof such that
the crude product has a total content of alkali metal
and alkaline-earth metal in metal salts of organic
acids of at most 90% of the content of alkali metal
and alkaline-earth metal in metal salts of organic
acids in the crude feed,
wherein content of alkali metal and alkaline-earth metal
in metal salts of organic acids is as determined by
ASTM Method D1318.
App. Br. 14 (Claims Appendix).
Rejections
In the Answer, the Examiner maintains the following rejections:
1. Claims 1-5, 7-11, and 13-16 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Harle1, Ward2, Nguyen3, and Bhan4 (Ans. 4-8 and
9-10);
2. Claim 6 under § 103(b) over the combined teachings of Harle, Ward,
Larson5, Nguyen, and Bhan (Ans. 10-11);
3. Claim 12 under § 103(a) over the combined teachings of Harle, Ward,
Nguyen, Bhan, and Wilson6 (Ans. 8-9); and
4. Claims 17 and 18 under § 103(a) over the combined teachings of Harle,
Ward, Eng7, Nguyen, and Bhan (Ans. 11-12).
Harle

1 US Patent 6,203,695 B1.
2 US Patent 4,572,778.
3 US Publication 2004/0045875 A1.
4 US Publication 2003/0111391 A1.
5 US Patent 3,446,730.
6 US Patent 5,089,462
7 US Patent 3,617,501.
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Harle teaches a process of hydrorefining or hydroconversion of hydrocarbon
feeds such as crude oil. The hydrorefining includes hydrodemetallization . Harle,
8:9-34. The process uses a catalyst having an alumina-based support and a metal
or compound from Column 6 of the Periodic Table and optionally a metal or
compound from Columns 8, 9, and 10. Harle, 3:19-27. Harle describes catalyst/oil
contacting conditions that will remove metals from the oil. Harle, 8:34-49.
Analysis
Claim 1
A comparison of Harle’s disclosure with the subject matter of Applicant’s
Claim 1 shows that Harle does not disclose the following: (1) that the crude oil to
be treated contains organic acid salts of alkali and alkaline earth metals in the
amount of at least .001%; (2) that the demetallization process reduces the amount
of those metals to at most 90% of the untreated value and (3) that the catalyst
support is theta alumina.
We view the claim recitation requiring a minimum level of alkali metal and
alkaline-earth metal in metal salts of organic acids as adding nothing of patentable
consequence. Such salts are typically present in crude oils. Nguyen, ¶ 0019; Spec.
2:20-27.
With respect to the reduction of the amount alkali and alkaline earth metals
in the metal salts to at most 90% of the amount, the Examiner found that Harle’s
process would necessarily reduce the amount of metals present in alkaline earth
and other salts. Final, 4; Ans. 5.
The Examiner’s finding is supported by a preponderance of the evidence.
Applicant’s catalysts and processing conditions encompass those described by
Harle. Applicant’s catalyst uses metals or compounds from Columns 5-10 of the
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Periodic Table. Harle teaches using a catalyst having metals or compounds from
Columns 6 and 8-10. Harle, 3:19-27. Applicant teaches a processing temperature
of 50 – 500 ºC. Spec. 10:26-27. Harle teaches hydroprocessing to remove metals
is usually done at a temperature of 320-450ºC. 8:34-39. Applicant says the LHSV
of the crude should be 0.5 – 30 h-1. Spec. 22:8. Harle teaches 0.1 – 5 h-1. Harle,
8:41-43. Applicant uses a ratio of hydrogen gas to crude feed of 0.1-100,000
Nm3/m3. Spec. 10:26-27. Harle teaches a ratio of gaseous hydrogen to
hydrocarbon feed of 200-5000 Nm3/m3. Harle, 8:44-46. Applicant uses a total
pressure in the range of 0.1-20MPa. Spec. 10:24-25. Harle teaches using a total
pressure of 15 MPa. Harle, 14:31. We also note that Applicant’s disclosure does
not indicate that there are any particular catalyst compositions or catalyst
contacting conditions necessary to reduce the amount of alkali and alkaline earth
metals present in the organic salts in the crude. Even the claimed theta alumina
support is indicated not to be critical. Spec. 35:7-8 (“In certain embodiments, the
support includes gamma alumina, theta alumina, delta alumina, alpha alumina, or
combinations thereof.”). The similarity of the catalytic metals and the contact
conditions between those used by Applicant and described by Harle provides
adequate support for the Examiner’s finding.
The fact that Harle did not recognize that the process would reduce the
content of alkali metal and alkaline-earth metal in metal salts of organic acids in
the crude feed is not dispositive of patentability. The catalytic metals and
parameters disclosed in Harle’s patent are encompassed by those taught in
Applicant’s Specification. To the extent the Applicant’s method achieves alkali
and alkaline earth metal reduction we find that Harle’s hydrodemetallization
process would also. Where the result is a necessary consequence of what was
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deliberately intended, it is of no import that the reference did not appreciate the
results. See MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed.
Cir. 1999); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir.
1983). Applicant’s recognition that the prior art process has an additional
beneficial effect – reduction of the content of alkali metal and alkaline-earth metal
in metal salts of organic acids—adds nothing of patentable consequence. See In re
Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011).
As to the catalyst support, Harle teaches using an alumina support
characterized as having a mixture of flakes of chi and eta alumina and needles of
gamma alumina. Harle, 7:36-46. With respect to theta alumina as the catalyst
support, the Examiner relies on Ward. Ward teaches catalytic hydrotreatment of
oils including crude oils. Ward, 8:48-52. Ward says the catalyst promotes a high
degree of demetallization of the oil. Ward, 9:33-37. The catalyst contains one or
more metals from Groups VIb (Column 6) or VII (Columns 8-10) of the Periodic
Table on a refractory oxide support. Ward, 9:53-57. The “highly” preferred
refractory oxides for the support are theta, gamma, and delta aluminas. Ward,
3:59-65.
One having ordinary skill in the art would have recognized that a theta
alumina support would have been a suitable alternative support for hydrotreatment
catalysts that include metals of column 6 and 8-10 of the Periodic Table as
described by Harle. One having ordinary skill in the art would have had a
reasonable expectation that catalytic metals and compounds of Columns 6 and 8-10
of the Periodic Table would act similarly with respect to hydrodemetallization,
regardless of the specific crystal morphology of the support. On this point, we
note that neither Applicant’s Specification, nor its arguments attribute any
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criticality to the use of a theta alumina support over other crystal forms of alumina.
Indeed, Applicant teaches that in addition to theta alumina, gamma, delta and other
forms may be used to practice the process of the invention. Spec. 35:7-8.
Applicant argues that the Examiner “has not provided sufficient proof that
the cited art teaches or suggests catalytic reduction of the content of alkali metals
and alkaline earth metals in metal salts of organic acids in a crude.” App. Br. 8.
Applicant directs us to the Examiner’s finding that Harle’s teaching that
organometallic complexes of sodium are reduced implies that metal salts of
organic acids are also reduced. App. Br. 8. Applicant then argues that one skilled
in the art would not equate an “organometallic complex” of sodium with a sodium
metal salt of an organic acid. App. Br. 8. While we agree that the two are
different, for the reasons stated above, a preponderance of the evidence supports
the Examiner’s finding that Harle’s process would necessarily reduce the content
of alkali and alkaline earth metal in metal salts of organic acids in the crude feed.
Applicant argues that it would not have been obvious to use theta alumina as
the support of the catalyst. App. Br. 10-11. In particular Applicant argues that
there is no suggestion to use Ward’s catalyst support as part of Harle’s catalyst.
App. Br. 10-11
We are not persuaded by Applicant’s argument. Ward provides evidence
that the person having ordinary skill in the art is aware that theta, gamma, and delta
alumina are known suitable and alternative materials for catalytic supports for
catalysts that include metals from Columns 6 and 8-10 of the Periodic Table. In
specifying theta alumina, Applicant has merely substituted one known support
material for another for its known purpose. To be non-obvious such a substitution
must do more than yield the predicted and expected result. See, KSR Int’l Co. v.
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Teleflex Inc., 550 U.S. 398, 417 (2007) (when a combination simply arranges old
elements with each performing the same function it had been known to perform
and yielding no more than one would expect from such an arrangement, the
combination is obvious.) Applicant has not directed us to evidence showing that
the use of a theta alumina support is critical in obtaining the results specified. We
again note that Applicant’s Specification indicates that the particular crystal
morphology of the alumina support used is not critical to Applicant’s process.
Spec. 35:7-8 (“In certain embodiments, the support includes gamma alumina, theta
alumina, delta alumina, alpha alumina, or combinations thereof.”).
We affirm the Examiner’s decision to reject claim 1.
Claims 2-5, 7-11, and 13-16
As Applicant has not provided separate arguments with respect to the subject
matter of Claims 2-5, 7-11, and 13-16, the decision rejecting those claims is
affirmed as well. 37 C.F.R. § 41.37(c)(vii).
Claims 6, 12, 17, and 18
Applicant’s Brief, while having separate sections directed to these claims,
does not challenge the Examiner’s determinations (Ans. 8-9 and 10-12) as to the
additional subject matter recited in these claims. App. Br., 11-13. Rather,
applicant relies on the arguments for patentability made as to the subject matter of
Claim 1. Since we affirmed the Examiner’s decision to reject Claim 1, we also
affirm the Examiner’s decision to reject Claims 6, 12, 17, and 18.
NEW GROUND OF REJECTION
Because our reasoning differs in some significant aspects from the
Examiner’s, we denominate our affirmance as a new ground of rejection under
37 C.F.R. § 41.50(b).
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DECISION
The Examiner’s decisions to reject claims 1-18 are affirmed.
This opinion contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). That section provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
NEW GROUND OF REJECTION
37 C.F.R. § 41.50(b)

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