Ex Parte Gabrielov et al

Patent Trial and Appeal Board

Jan 26, 2017

13208057 (P.T.A.B. Jan. 26, 2017)

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.
13/208,057 08/11/2011 Alexei Grigorievich GABRIELOV TH3950 US 7256
23632 7590 01/30/2017
SHF! T OH miUPANY EXAMINER
P O BOX 2463 MAYES, MELVIN C
HOUSTON, TX 77252-2463
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXEI GRIGORIEVICH GABRIELOV,1
Ed Ganja, and Salvatore Philip Torrisi
Appeal 2015-003855
Application 13/208,057
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Alexei Grigorievich Gabrielov, Ed Ganja, and Salvatore Philip Torrisi
(“Shell”) timely appeal under 35 U.S.C. § 134(a) from a non-final rejection2
of all pending claims 1—12. We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 The real party in interest is identified as Shell Oil Company (“Shell”).
(Appeal Brief, filed 27 October 2014 (“Br.”), 2.)
2 Office Action mailed 5 June 2014 (“Office Action”; cited as “OA”),
(reopening examination after an appeal brief was filed).
Appeal 2015-003855
Application 13/208,057
OPINION
A. Introduction3 4
The subject matter on appeal relates to methods of making
compositions said to be useful for hydroprocessing petroleum-derived
hydrocarbon streams to remove sulfur and nitrogen. (Spec. 1,11. 11—15.)
In the words of the ’057 Specification,
The inventive composition may be made by a method wherein
a metal-containing solution is incorporated into a shaped
support to provide a metal-incorporated support and drying
the metal-incorporated support so as to provide a dried metal-
incorporated support having a volatiles content in the range of
from 3 to 20 wt % LOI[4]; incorporating a polar additive into
the dried chelant treated metal-incorporated support to thereby
provide an additive impregnated composition; and
incorporating a chelating agent either into the shaped support
or into the dried metal-incorporated support.
(Id. at 2,11. 16-22.)
The Specification reveals that “[tjhrough the incorporation or
impregnation of the shaped support with the metal-containing solution, the
metal components can become strongly bound to the surface of the support
material.” (Id. at 7,11. 26—28.) The chelating agents are said to prevent the
3 Application 13/208,057, Chelant and polar additive containing
composition useful in the hydroprocessing of hydrocarbon feedstocks and
method of making and use thereof filed 11 August 2011, claiming the
benefit of a provisional application filed 13 August 2010. We refer to the
“’057 Specification,” which we cite as “Spec.”
4 Loss on ignition is defined as the percentage weight loss of the material
after exposure to air at 482°C for two hours, i.e.,
LOI = (wt(pre-exposure) - wt(post-exposure))/wt(pre-exposure).
(Spec. 7,11. 22-25.)
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Appeal 2015-003855
Application 13/208,057
metals from being strongly bound to the surface of the support, or to pull
them out of the surface of the support. {Id. at 7,11. 28—29.) The drying step
is said to remove at least a portion of the solvent from the pores of the
support while leaving the chelant, if present, in place. {Id. at 12,11. 1—7.)
Moreover, the drying step is said to be “carefully controlled in order to avoid
either evaporating or converting the chelant or chelates.” {Id. at 11. 31—32.)
The space created by the removal of the solvent makes room for the polar
additives. {Id. at 6,1. 25, to 7,1. 7.) The polar additive, which has a dipole
moment that “exceeds the dipole moment of the hydrocarbon oil that is used
in the inventive composition” {id. at 17,11. 4—5) and that is at least 0.45
{id. at 1. 6), is said to re-disperse the metal chelate complexes over the
surface of the support material, and thereby provide enhanced catalytic
performance. {Id. at 3,11. 8—22.)
Sole independent claim 1 is representative and reads:
A method of making a composition, wherein said method
comprises:
[1] providing a shaped support;
[2] incorporating a metal-containing solution into
said shaped support to provide a metal-incorporated
support;
[3] drying said metal-incorporated support so as to
provide a dried metal-incorporated support having a
volatiles content in the range of from 1 to 20) % LOI;
[4] incorporating a polar additive into
said dried metal-incorporated support to thereby provide
an additive impregnated composition', and
[5] incorporating a chelating agent either
[a] into said shaped support or
[b] into said dried metal-incorporated support.
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Application 13/208,057
(Claims App., Br. 16; some indentation, paragraphing, emphasis, and
bracketed labels added.)
The Examiner maintains the following grounds of rejection5,6’7:
A. Claims 1—10 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Radiowski8 and Gabrielov.9
B. Claims 1—10 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Radlowski and Abe.10
Al. Claims 11—12 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Radlowski and Gabrielov,
further in view of Nelson.11
Bl. Claims 11—12 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Radlowski and Abe,
further in view of Nelson.
5 Examiner’s Answer mailed 4 December 2014 (“Ans.”).
6 Rejections under § 103 in view of Radlowski (solely), and in view of
Radlowski and Nelson, have been withdrawn. (Ans. 2).
7 Because this application was filed before the 16 March 2013 effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
8 Cecelia A. Radlowski et al., Method of making hydroprocessing catalyst,
U.S. Patent Application Publication 2009/0298677 Al (2009), based on an
application filed 11 December 2006.
9 Alexei Grigorievich Gabrielov and John Anthony Segal, Oil and polar
additive impregnated composition useful in the catalytic hydroprocessing of
hydrocarbons . . . , U.S. Patent Application Publication 2010/0236988 Al
(2010), based on an application filed 19 March 2009. AGG is the common
inventor, and Shell Oil Co. is the common assignee.
10 Satoshi Abe et al., Hydroprocessing catalyst and use thereof U.S. Patent
Application Publication 2004/0050754 Al (2004).
11 Gerald V. Nelson et al., Catalyst with specified pore size distribution, U.S.
Patent No. 5,545,602 (1996).
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Appeal 2015-003855
Application 13/208,057
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejection A: Radlowski and Gabrielov
Shell urges the Examiner erred in rejecting claims 1—10 in view of
Radlowski and Gabrielov because,
[e]ven when Gabrielov is combined with Radlowski, the
combined method would involve impregnation of the support
with a metal and at least one chelate followed by drying and
treatment with polar additive and a hydrocarbon oil.
Gabrielov does not suggest the use of polar additive alone
following the drying step, since Gabrielov teaches the
presence of a hydrocarbon oil is essential to realizing the
benefits of the invention.
(Br. 11, last para.; emphasis added.)
This argument is not persuasive of harmful error because step [4] of
claim 1, “incorporating a polar additive into said dried metal incorporated
support to thereby provide an additive impregnated composition,” does not
exclude the presence or incorporation of other materials as long as a polar
material is incorporated into “said dried metal incorporated support.”
Moreover, Shell has not directed our attention to any credible evidence that
the presence of a hydrocarbon would result in the polar material not being
incorporated in the dried metal-incorporated support. In this regard, it
should be noted that the properties of the composition of matter made by the
claimed process are not expressly limited, and that no particular
functionality is required.
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Application 13/208,057
The broadest reasonable interpretation of the claims, in light of the
supporting disclosure, supports our claim interpretation. The constant
references back to products of previous steps12 create a rather tightly
structured claim. Nothing, however, prevents the “metal-containing
solution” from including other materials, such as a chelating agent. If this
were not so, Step [5a] would make step [2] impossible13, and step [5b]
would make step [4] impossible.
Shell makes no arguments for the separate patentability of any
dependent claim, other than claim 12, which we address infra.
Rejection A is therefore affirmed.
Rejection B: Radlowski and Abe
Shell urges the Examiner erred in rejecting claims 1—10 in view of
Radlowski and Abe because Abe, in paragraph [0043], which names
numerous polar compounds that may be added during the preparation of the
12 E.g., the recitations in claim 1 of “said shaped support” (step [2], referring
to the product of step [1]), “said metal-incorporated support” (step [3],
referring to the product of step [2]), “said dried metal incorporated support”
(Step [4], referring to the product of step [3]), “said shaped support”
(step [5a], referring to the product of step [1]) and “said dried metal-
incorporated support” (step [5b], referring to the product of step [3]).
13 The exclusive interpretation urged by Shell for step [4] would result in the
“shaped support” provided by step [1], upon being modified by
incorporation of a chelating agent (step [5a]), becoming, e.g., a “chelate-
incorporated shaped support.” That is, after chelate incorporation, “said
shaped support” provided by step 1 would no longer exist. Thus, the very
structure of claim 1 indicates Shell’s argument is misplaced. If Shell wishes,
in future proceedings, to present a more limited step [4], an express
exclusionary limitation might be included, provided that the written
description requirement of 35 U.S.C. § 112(1) is satisfied.
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Application 13/208,057
hydroprocessing catalyst described by Abe, “does not teach incorporating a
polar additive into a dried metal-incorporated support.” (Br. 13,1. 17.) The
difficulty with this argument is that it does not account for the Examiner’s
finding that “Abe [tjeaches ‘wide range of variations on this method’ and
‘drying and/or calcining may be carried out in between” (para 0043).”
(OA 20,11. 16—18.) The Examiner explains that “Abe is open to multiple
applications of solutions and multiple drying of the support material after the
application of a polar and/or a chelating compound.” (Ans. 6.) In view of
the Examiner’s prior finding that Radiowski teaches “at least one chelating
agent”—and therefore plural chelating agents, which may be “polar
compounds” (OA 19)—Shell’s argument is not persuasive of harmful error
in this rejection.
In the Reply14, Shell focuses on the additive EDTA, and urges that
even “if it is used at all in the ‘multiple impregnations,’ would still be added
to the catalytic metal-containing impregnating solution to facilitate
impregnation. It would not be incorporated as a separate component into a
dried metal-incorporated support as required by the present claims.”
(Reply 2, last line, to 3,1. 3.)
This argument is not persuasive because it overlooks the Examiner’s
finding that Radio wski suggests using one or more chelating agents (OA 19,
1. 5), naming several that are also recited in Radlowski’s claims {id. at 11. 9—
20) as well as in Table 1 of the ’057 Specification {id. at 11. 21—23) and
named by Abe {id. at 20,11. 13—14). Clearly, the Examiner does not suggest
that using the same chelating agent as the polar additive would meet the
14 Reply Brief filed 3 February 2015 (“Reply”).
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Application 13/208,057
claims. Rather, the Examiner finds that step [4] would read on the use of a
different chelating agent, as suggested by Radlowski, with drying the
impregnated support in between subsequent impregnations.
The rejection of claims 1—10 in view of Radlowski and Abe is
affirmed.
Rejections A1 and Bl: claim 12 further in view of Nelson
Claim 12 depends from claim 1 and requires that “at least 75% of the
available pore volume of said dried metal-incorporated support is filled with
said polar additive.” (Claims App., Br. 18.)
The Examiner finds this limitation would have been obvious “[sjince
the combination of [the references] teach the same properties of the support
and the process, the support of [the references] is expected to and would
necessarily have at least 75 % of the available pore volume of said dried
metal-incorporated support is filled with said polar additive.” (OA 26,11. 8—
12; 27,11. 1-5.)
As the Examiner points out (Ans. 7,11. 20—21), Shell does not, in the
principal Brief on Appeal, produce any argument in response to
Rejections A1 and Bl,15 for either claim 11 or claim 12.
Procedurally, the failure to present arguments relating to a rejection in
the Brief, without good cause, results in waiver of those arguments on
appeal.16 Shell’s belated arguments presented in the Reply (Reply 3—4) are
15 These rejections are distinct from the rejection based solely on Radlowski,
which, as noted at 4, n.6, supra, the Examiner withdrew.
16 37 C.F.R. § 41.37(c)(l)(iv) (2014) reads in most relevant part,
“[t]he arguments shall explain why the examiner erred as to each ground of
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Application 13/208,057
not accompanied by an explanation of why the arguments could not have
been presented earlier. Moreover, those arguments present proposed
findings of fact without citing support in the record either for the substance
of those facts, and without indicating where those arguments were
previously raised.
Under these circumstances, we affirm Rejections A1 and Bl.
C. Order
It is ORDERED that the rejection of claims 1—12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
rejection contested by appellant. Except as provided for in §§ 41.41 [Reply
brief], 41.47 [Oral hearing] and 41.52 [Rehearing] any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.”
37 C.F.R. § 41.41(b)(2) reads, “Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”
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