Ex Parte JARVIS et al

Patent Trial and Appeal BoardMar 11, 2019

14060268 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/060,268 10/22/2013 Jacqueline M. JARVIS 86000 7590 03/13/2019 Fox Rothschild LLP / G. Nelson 997 Lennox Drive Building 3 Lawrenceville, NJ 08648 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3303-47-1 (157335.01901) 1144 EXAMINER PEO,KARAM ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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): ipdocket@foxrothschild.com svieau@foxrothschild.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACQUELINE M. JARVIS, RY AN P. RODGERS, and WINSTON K. ROBBINS Appeal2018-005757 Application 14/060,268 Technology Center 1700 Before JAMES C. HOUSEL, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-5. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 We cite to the Specification ("Spec.") filed October 22, 2013; Appellant's Appeal Brief("App. Br.") filed January 10, 2018; Examiner's Answer ("Ans.") dated March 22, 2018; and Appellant's Reply Brief ("Reply Br.") dated May 14, 2018. 2 Appellant is Applicant, Florida State University Research Foundation, Inc., which is identified in the Appeal Brief as the real party in interest. App. Br. 3. Appeal2018-005757 Application 14/060,268 BACKGROUND The subject matter on appeal relates to a process for isolating interfacial materials from crude oil. Spec. 1:11-12. Interfacial or interfacially active material refers to a compound, typically comprising a polar and a non-polar portion, that accumulates at an oil/water interface. Id. 3 :27--4: 1. "Knowledge of the compounds that comprise interfacial layers can help determine emulsion stability within a particular crude oil." Id. 4:7- 9. Claim I-the sole independent claim on appeal-reads: 1. A method for analyzing a crude oil solution for the presence of at least one interfacially active compound in the crude oil solution, the method comprising: adding water to a porous adsorbent to obtain a supported water substrate, wherein the supported water substrate comprises from 10 to 30 water monolayers disposed on the porous adsorbent; exposing the crude oil solution to the supported water substrate for a period of time; separating the supported water substrate from the crude oil solution; washing the supported water substrate with a water immiscible solvent to remove at least one hydrocarbon while retaining the at least one interfacially active compound with the water monolayers on the supported water substrate; displacing water from the plurality of water monolayers and the at least one interfacially active compound from the porous adsorbent with an alcohol and a polar solvent for the interfacially active compound to obtain a displaced phase, wherein the displaced phase comprises the water, the at least one interfacially active compound, the alcohol, and the polar solvent; and drying the displaced phase to isolate the at least one interfacially active compound. App. Br. 32 (Claims Appendix). 2 Appeal2018-005757 Application 14/060,268 REJECTIONS 3 Claims 1-5 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Gorbaty4 and Goual. 5 OPINION Claim 1 recites "adding water to a porous adsorbent to obtain a supported water substrate ... [that] comprises from 10 to 3 0 water monoloayers disposed on the porous adsorbent," and "exposing the crude oil solution to the supported water substrate." A dispositive issue in this case is whether the Examiner erred in finding that Gorbaty discloses contacting crude oil with the claimed water supported substrate. Compare Ans. 4 ("Gorbaty teaches exposing the crude oil solution to the solvent supported substrate.") with, App. Br. 11 ("[T]here is no discussion or suggestion in Gorbaty of coating the adsorbent first with the polar solvents that are used by Gorbaty, then contacting the coated adsorbent with the hydrocarbon."); Reply Br. 5 ("There is no discussion or suggestion in Gorbaty of coating the adsorbent first with water, then contacting the coated adsorbent with the hydrocarbon."). Gorbaty discloses a hydrocarbon feedstock refining process in which the feedstock is contacted with an adsorbent that adsorbs metals and coke precursors. Gorbaty 1. After the refined feedstock effluent is transferred from the adsorbent, adsorbent is regenerated by removing the adsorbed 3 The Examiner designated the rejections based on Gorbaty and Goual as new grounds, the details of which are set forth at pages 3-8 of the Answer. 4 WO 99/31199 Al, published June 24, 1999. 5 L. Goual et al., "Adsorption of Bituminous Components at Oil/Water Interfaces Investigated by Quartz Crystal Microbalance: Implications to the Stability of Water-in-Oil Emulsions," 21 Langmuir, 2005, 8278-8289. 3 Appeal2018-005757 Application 14/060,268 metals and coke precursors using a suitable polar solvent. Id. at 1-2. The Examiner finds that Gorbaty' s adsorbent regeneration step may be performed with water, such that removing the adsorbed metals and coke precursors would have resulted in the claimed supported water substrate. Ans. 3. The Examiner also finds that, although claim 1 requires adding water to the adsorbent and exposing crude oil to the adsorbent, "[ t ]he claims do not require a specific order of steps." Id. at 11. Alternatively, the Examiner determines that it would have been obvious to one of ordinary skill in the art to perform Gorbaty' s process steps in any order because the "selection of any order to performing process steps is prima facie obvious in the absence of new or unexpected results." Id. We do not agree with the Examiner's claim interpretation. Appellant's claim 1 requires forming a "solvent supported substrate" by adding a specified amount of water to the adsorbent, and exposing crude oil to the resulting solvent supported substrate. Absent the prior step of adding water to the substrate, there would be no solvent supported substrate to which the crude oil could be exposed. Thus, claim 1 expressly requires a specific sequence: first, water is added to the adsorbent, then, crude oil is exposed to the water supported adsorbent. Nor do we agree that Gorbaty's sequence of steps could arbitrarily be changed to meet that of claim 1. Gorbaty contacts feedstock with an adsorbent to adsorb metals and coke precursors from the feedstock, and then uses a polar solvent to remove the adsorbed metals and coke precursors. Gorbaty 1-2. There would have been no reason to add polar solvent to Gorbaty' s adsorbent prior to exposing the adsorbent to feedstock because there would have been no adsorbed metals or coke precursors to be removed. 4 Appeal2018-005757 Application 14/060,268 The Examiner's finding that Gorbaty teaches exposing crude oil to a solvent supported substrate is not supported by a preponderance of the evidence. The Examiner does not point to anything in Goual that addresses or cures the above-described deficiencies with regard to Gorbaty. The rejections are not sustained. DECISION The Examiner's decision rejecting claims 1-5 is reversed. REVERSED 5