Ex Parte Woo et al

Patent Trials and Appeals Board

Jan 30, 2019

13597523 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/597,523 08/29/2012
27810 7590 02/01/2019
ExxonMobil Research & Engineering Company
P.O. Box 900
1545 Route 22 East
Annandale, NJ 08801-0900
FIRST NAMED INVENTOR
Hyung Suk Woo
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.
2012EM251 9372
EXAMINER
DOYLE, BRANDI M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
ipg@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HYUNG SUK WOO, JANE CHI-YA CHENG,
TEH C. HO, and STEPHEN HAROLD BROWN,
Appeal2017-003340
Application 13/597 ,523 1
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-5, 7-14, and 16-26. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The appealed invention relates to a process for producing a
hydroprocessed product comprising exposing a combined feedstock
comprising a heavy oil feed component and a solvent component to a
1 According to Appellants, the real party in interest is ExxonMobil Research
and Engineering Co. See App. Br. 3.
Appeal2017-003340
Application 13/597,523
hydroprocessing catalyst. (Spec. ,r 12). Independent claim 1 is
representative of the appealed subject matter and reproduced below:
1. A process for producing a hydroprocessed product,
compnsmg:
exposing a combined feedstock comprising a heavy oil feed
component and a solvent component to a bulk metal
hydroprocessing catalyst comprising a Group VIII non-noble
metal and a Group VI metal and having a median pore size of
about 85 A to about 120 A, under effective fixed bed
hydroprocessing conditions to form a hydroprocessed effluent,
the effective hydroprocessing conditions including a total
pressure of about 1500 psig (10.3 MPag) or less, a temperature
of at least about 3 60°C, and a liquid hourly space velocity of
the fraction of the combined feedstock boiling above 1050°F
(566°C) of at least about 0.10 hr-1, the heavy oil feed
component having an n-pentane asphaltene content of at least
about 5 wt%;
separating the hydroprocessing effluent to form at least a liquid
effluent; and
fractionating a first portion of the liquid effluent to form at least
a distillate product and a bottoms product, the bottoms product
having an ASTM D6352 distillation point of at least about
600°F (3 l 6°C).
Claims Appendix to App. Br. 17.
Appellants (see App. Br., generally) request review of the following
rejections:
I. Claims 1-3, 5, 7-12, and 17-26 are rejected under 35 U.S.C. I03(a) as
unpatentable over the combined teachings of Eijsbouts-Spickova (US
2010/0248945 Al; Sept. 30, 2010), Shih (US 4,421,633; Dec. 20, 1983),
Peck (US 4,808,298; Feb. 28, 1989), Baldassari (US 2010/0320122 Al; Dec.
23, 2010), and Gauthier (US 2008/0149534 Al; June 26, 2008).
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Appeal2017-003340
Application 13/597,523
II. Claims 4, 13, and 14 are rejected under 35 U.S.C. I03(a) as
unpatentable over the combined teachings of Eijsbouts-Spickova, Shih,
Peck, Baldassari, Gauthier, and Bowes (US 4,548,709; Oct. 22, 1985).
III. Claim 16 is rejected under 35 U.S.C. I03(a) as unpatentable over the
combined teachings of Eijsbouts-Spickova, Shih, Peck, Baldassari, Gauthier,
and Tan (US 2007/0295640 Al; Dec. 27, 2007).
The complete statement of the rejections on appeal appear in the Final
Office Action. (Final Act. 4--14).
OPINION
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
rejection of independent claims 1, 25, and 26. We add the following:
The dispositive issue for this appeal is:
Did the Examiner err in determining that the combined teachings of
Eijsbouts-Spickova, Shih, and Peck teach or suggest a process for producing
a hydroprocessed product, comprising exposing a combined feedstock
comprising a heavy oil feed component and a solvent component to a bulk
metal hydroprocessing catalyst at a liquid hourly space velocity of the
fraction of the combined feedstock boiling above I050°F (566°C) of at least
about O.lOhr-1 as required by independent claims 1, 25, and 26? 2
The Examiner finds Eij sbouts-Spickova discloses hydroprocessing
feed mixtures, which include residual and distillate fractions under
2 The Examiner cited Baldassari and Gauthier to address other limitations of
the claim not related to the dispositive issue. Consequently, a discussion of
these references is unnecessary.
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Appeal2017-003340
Application 13/597,523
hydroprocessing conditions including a hydroprocessing catalyst in a fixed
bed. (Final Act. 4--5). According to the Examiner:
The effective hydroprocessing conditions for residue
include a total pressure of 65-1100 bar for resids but generally
about 5 to 250 bar (0166), which overlaps the claimed range of
about 1500 psig (i.e. about 104 bar) or less, a temperature
between 340 and 450, which overlaps the claimed range of at
least about 360 °C and an LHSV of the feed between 0.1 and 1
h- 1 (0166 table). When treating in a combined process with a
solvent, as discussed below, it is expected that the LHSV of the
portion of the combined feed boiling above 1050°F (566°C)
would overlap the claimed range of at least about 0.1 h- 1. It is
noted that Eijbouts-Spickova teaches non-feed specific effective
hydroprocessing conditions (0162; 0166) that all overlap the
claimed ranges and Eijbouts-Spickova teach treating heavy
feeds such as e.g. vacuum resid, and light fractions (see list in
0164), and mixtures thereof (0164).
(Final Act. 4--5).
The Examiner recognizes Eijbouts-Spickova is silent regarding
exposing the heavy oil feed to the hydroprocessing catalyst in a combined
feedstock comprising the heavy oil component and a solvent component.
The Examiner relies on the teachings of Shih and Peck for suggesting the
inclusion of a solvent in the feedstock. (Final Act. 5). The Examiner
determined the combined teachings of Eijsbouts-Spickova, Shih, and Peck
suggest hydroprocessing of a heavy oil component and a solvent component
under effective conditions would overlap the claimed LHSV of the 1050°F+
fraction. (Final Act. 4--5).
Appellants argue Eijsbouts-Spickova does not teach hydroprocessing
in the presence of a solvent. Appellants argue that it would not have been
obvious to use the solvent of either Shih or Peck because the described
solvent processing requires utilizing specialized catalyst systems. (App. Br.
11-14). Appellants specifically argue:
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Appeal2017-003340
Application 13/597,523
Based on the description of the relationship between pore size
and solvent processing in Shih, one of skill in the art would
understand that modifying Eijsbouts-Spickova to include the
solvent processing of Shih would also require incorporating the
catalyst pore size teachings of Shih. Since Eijsbouts-Spickova
teaches a large range of catalyst pore sizes, one of skill in the
art could make a bulk catalyst according to Eijsbouts-Spickova
with the pore sizes from Shih. However, in order to arrive at
the claimed invention, any proposed combination of Eij sbouts-
Spickova and Shih would need to result in a catalyst with a
median pore size of about 85 A to about 120 A. This poses a
difficulty when attempting to modify Eijsbouts-Spickova in
view of Shih.
(App. Br. 12).
Appellants also argue the Examiner's determination to incorporate a
solvent as described by Shih or Peck is premised on hindsight. (App. Br.
13-14; Reply Br. 7).
We agree with Appellants that the Examiner has not properly
explained why the teachings of Shih and Peck would have suggested the
incorporation of a solvent absent the described catalyst system. Shih
specifically states:
This invention relates to an improved process for
catalytically hydrocracking residuums in a solvent and further
relates to demetalation, desulfurization, and decarbonization
thereof. It especially relates to using a dual-bed catalyst system
having a large-pore catalyst as the first bed and a small-pore
catalyst as the second bed. It specifically relates to recycling a
process-generated distal and (boiling at about 400°-700° F.) as
the solvents.
(Shih, col 1, 11. 8-15).
The Examiner in the Answer states: "Shih and Peck teach the reasons
for or benefits of adding a solvent to heavy feed during hydroprocessing and
Eijsbouts-Spickova teaches processing heavy feed, thus, one would be
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Appeal2017-003340
Application 13/597,523
motivated to add solvent to the process taught in Eijsbouts-Spickova to
minimize processing problems taught in the art." (Ans. 20). The claimed
invention requires a catalyst comprising a Group VIII non-noble metal and a
Group VI metal and having a median pore size of about 85 A to about
120 A. The Examiner has failed to address Appellants' argument that the
solvent of Shih and Peck required the described catalyst systems having the
described pore size. Moreover, the Examiner has not explained how the
process of Eijsbouts-Spickova would have been modified to incorporate a
process generated solvent such as described in Shih. The Examiner has also
failed to explain why the improvements provided by Peck, which utilizes a
catalyst having a pore size of 20 A would have been expected to also occur
in the hydroprocessing system of Eijsbouts-Spickova, which employs
catalyst having a larger pore size.
Appellants argue the Examiner has failed to properly consider the
claimed limitation "the liquid hourly space velocity [LHSV] of the fraction
of the combined feedstock boiling above 1050°F ( 566°C) of at least about
0.10 hr-1" claim limitation. (App. Br. 10-11). In support of this position,
Appellants argue the Examiner has not presented a proper basis for
establishing that the LHSV of Eijbouts-Spickova overlaps the claimed
invention. (App. Br. 10-11).
As explained by the present Specification, the LHSV is a
characterization of the "flow rate of a portion of the feed relative to the
amount of catalyst being used for processing the feed." (Spec. ,r 38). The
Examiner has not directed us to evidence that supports the position that the
hydroprocessing conditions of Eij sbouts-Spickova are the same as the
claimed invention such that when combined with a solvent the result would
have been the claimed LHSV of the 1050°F + fraction. The Examiner has
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Appeal2017-003340
Application 13/597,523
not explained how the LHSV ranges reported in Eijsbouts-Spickova at ,r 166
are suitable for determining the LHSV of the 1050°F + fraction. The
Examiner has also failed to explain of how the addition of a solvent to feed
would have affected the hydroprocessing conditions including the LHSV of
the 1050°F + fraction.
Since we reverse because the Examiner has not established that the
relied-upon disclosures are sufficient to support obviousness, we need not
reach the issue of the sufficiency of the evidence of unexpected results
presented by Appellants. Cf In re Geiger, 815 F.2d 686, 688 (Fed. Cir.
1987).
For the foregoing reasons and those stated in the Brief, we determine
that the Examiner's conclusion of obviousness is not supported by facts.
"Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we cannot sustain the Examiner's decision to reject claims 1-
5, 7-14, and 16-26.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1-5, 7-14, and 16-
26 are reversed.
REVERSED
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