TOTAL RAFFINAGE MARKETING et al.Download PDFPatent Trials and Appeals BoardApr 20, 20212020003217 (P.T.A.B. Apr. 20, 2021) Copy Citation 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. 13/720,026 12/19/2012 Bertrand GUICHARD PET-2826 5550 23599 7590 04/20/2021 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BLVD. SUITE 1400 ARLINGTON, VA 22201 EXAMINER LI, JUN ART UNIT PAPER NUMBER 1796 NOTIFICATION DATE DELIVERY MODE 04/20/2021 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): docketing@mwzb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BERTRAND GUICHARD, LAURENT SIMON, SYLVIE LOPEZ, VALENTINA DE GRANDI, DELPHINE MINOUX, and JEAN-PIERRE DATH ____________ Appeal 2020-003217 Application 13/720,026 Technology Center 1700 ____________ Before JEFFREY R. SNAY, LILAN REN, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 2, 4–9, 12, 20–32, 36–49, and 53– 57.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Total Raffinage Marketing and IFP Energies Nouvelles as the real parties in interest. Appeal Brief filed December 17, 2019 (“Appeal Br.”), 1. 2 Final Office Action entered June 26, 2019 (“Final Act.”), 1. Appeal 2020-003217 Application 13/720,026 2 CLAIMED SUBJECT MATTER Appellant claims a process for the preparation of a catalyst. Appeal Br. 2–4. Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A process for the preparation of a catalyst from a catalytic precursor comprising a support and a hydro- dehydrogenating function, wherein the support is based on alumina and/or silica-alumina and/or zeolite and the hydro- dehydrogenating function comprises at least one element of group VIB and optionally at least one element of group VIII, wherein said catalytic precursor contains the entirety of the hydro-dehydrogenating function elements of Group VIB and the entirety of optional elements of Group VIII, wherein the catalytic precursor contains phosphorus and wherein the catalytic precursor has been dried, calcined or regenerated, said process comprising: 1) a first step of impregnating the catalytic precursor with at least one solution consisting of at least one carboxylic acid other than acetic acid, at least one solvent, optionally acetic acid and optionally phosphorus, then maturing and drying at a temperature lower than 200°C, optionally followed by a heat treatment at a temperature lower than 350°C, to obtain a first-impregnated catalytic precursor, and 2) a second and subsequent step of impregnating the first-impregnated catalytic precursor with a solution consisting of at least one C 1-C4 dialkyl succinate, at least one solvent, optionally acetic acid and optionally phosphorus, and then maturing and drying at a temperature lower than 200°C, wherein the first and second steps are conducted separately and without a subsequent calcination step. Appeal Br. 19 (Claims Appendix) (emphasis added). Appeal 2020-003217 Application 13/720,026 3 REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered November 1, 2019 (“Ans.”):3 I. Claims 1, 2, 4–9, 12, 20–32, 36–49, and 53–57 under 35 U.S.C. § 103 as unpatentable over Marchand4 in view of Cholley;5 and II. Claims 1, 2, 4–9, and 12 for nonstatutory, obviousness-type double patenting over claims 10–19 of Marchand II6 in view of Cholley. FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejection of claims 1, 2, 4–9, 12, 20–32, 36–49, and 53–57 under 35 U.S.C. § 103, and rejection of 1, 2, 4–9, and 12 for nonstatutory, obviousness-type double patenting, for reasons set forth in the Appeal and Reply Briefs, and below. 3 The Examiner withdrew the rejection of claims 22, 38, and 55 under 35 U.S.C. § 112(d), and rejection of claims 10 and 16–19 for nonstatutory double patenting, in the Examiner’s Answer. Ans. 11. 4 Marchand, et al. (WO 2011/080407 Al, published July 7, 2011). Appellant does not contest the Examiner’s reliance on Marchand, et al. (US 2013/0008829 A1, published January 10, 2013) as an English equivalent of the published PCT application, and citations to Marchand in this decision, therefore, refer to the published U.S. application. 5 Cholley et al. (US 2008/0194892 Al, published August 14, 2008). 6 Marchand et al. (US 9,174,202 B2, issued November 3, 2015) (hereinafter “Marchand II”). Appeal 2020-003217 Application 13/720,026 4 Rejection I We first address the Examiner’s rejection of claims 1, 2, 4–9, 12, 20– 32, 36–49, and 53–57 under 35 U.S.C. § 103 as unpatentable over Marchand in view of Cholley. Like claim 1 (set forth above), the two remaining independent claims on appeal—claims 24 and 41—both recite processes for the preparation of a catalyst that include a first step of impregnating a catalytic precursor with at least one solution consisting of at least one carboxylic acid other than acetic acid and then maturing and drying at a temperature lower than 200°C, and a second and subsequent step of impregnating the first-impregnated catalytic precursor with a solution consisting of at least one C1-C4 dialkyl succinate and then maturing and drying at a temperature lower than 200°C. Appeal Br. 20–22 (Claims Appendix). As Appellant explains, the only difference between the three independent claims is that “in claim 1 the phosphorus is required in the catalyst precursor, in claim 24 the phosphorus is required in the first impregnation step and in claim 41 the phosphorus is required in the second impregnation step. Otherwise, the claims are the same.” Appeal Br. 4. Because the three independent claims share the limitations at issue in the present appeal, we limit our discussion to claim 1, with the understanding that our analysis of claim 1 also applies to independent claims 24 and 41. Marchand discloses a hydrotreatment catalyst comprising an alumina- based support, phosphorus, at least one Cl-C4 dialkyl succinate, acetic acid, and a hydro-dehydrogenizing function comprising at least one group VIII element and at least one group VIB element. Marchand ¶¶ 16, 17. Appeal 2020-003217 Application 13/720,026 5 Marchand discloses producing the catalyst by a) impregnating an alumina support with a solution containing the group VIII and VIB elements and phosphorous to obtain a catalytic precursor, b) drying the catalytic precursor at a temperature below 180ºC without subsequent calcination, c) impregnating the dried catalytic precursor with a solution containing dialkyl succinate and acetic acid, d) maturing the impregnated dried catalytic precursor, and e) drying the matured impregnated dried catalytic precursor at a temperature below 80ºC to 160ºC without subsequent calcination. Marchand ¶¶ 32–37, 39. Marchand discloses carrying out the maturating step at a temperature of 17ºC to 50ºC for 10 minutes to 48 hours, preferably 30 minutes to 5 hours, more preferably 30 minutes to 4 hours, and even more preferably 30 minutes to 3 hours. Marchand ¶ 94. The Examiner finds that Marchand discloses all the features of the process of claim 1, except that “Marchand does not expressly teach impregnating the catalyst precursor with a solution consisting of at least one carboxylic acid other than acetic acid, [and] at least one solvent.” Final Act. 4–5. The Examiner relies on Cholley to address Marchand’s lack of disclosure of such a process step. Final Act. 5–6. Cholley discloses producing a catalyst by impregnating a refractory oxide carrier comprising at least one group VIII metal and at least one group VIB metal with a solution containing at least one organic compound of formula (I) or (II) shown in Cholley’s paragraph 22. Cholley ¶¶ 22, 23, 31. Cholley discloses that the compound of formula (I) is preferably a C1-C4 dialkyl succinate. Cholley ¶ 17. Cholley discloses that “the presence on the catalysts of at least one organic compound of formula (I) or (II) increases the Appeal 2020-003217 Application 13/720,026 6 effectiveness of the catalysts in desulfurization and in denitrogenation.” Cholley ¶ 12. Cholley discloses that impregnation of the refractory oxide carrier containing the group VIII and VIB metals with the solution of the organic compound(s) of formula (I) or (II) can be conducted “in the presence of at least one acid, generally selected from carboxylic acids, hydrocarboxylic acids and polyacids.” Cholley ¶ 29. Cholley discloses that “[t]he acid(s) can be introduced with the compound(s) of formula (I) or (II) or separately, if, for example, the mixture obtained is not homogeneous.” Cholley ¶ 30. Cholley explains that in such a case of inhomogeneity, “it may be advantageous to use a solvent which allows the simultaneous introduction of the acid(s) with the compound(s) of formula (I) or (II), the solvent then ensuring dissolution of all the organic compounds present.” Cholley ¶ 30. Cholley discloses that if an acid is impregnated separately, it preferably is introduced before impregnation of the compound(s) of formula (I) or (II), using similar impregnation conditions. Cholley ¶¶ 30, 31. Cholley discloses that “[a]t the end of the impregnation step, the catalyst can be subjected . . . to an optional maturation step” followed by an “optional thermal treatment.” Cholley ¶ 32. The Examiner determines that it would have been obvious to one of ordinary skill in the art to adopt the “preferred acid impregnation before compound of formula I impregnation (i.e. dimethyl succinate impregnation) as shown by Cholley to modify the catalyst producing process of Marchand because by doing so can help producing a catalyst with improved effectiveness in hydroprocessing (e.g. hydrodesulfurization and Appeal 2020-003217 Application 13/720,026 7 denitrogenation) as suggested by Cholley.” Final Act. 6 (citing Cholley ¶¶ 9, 12). On the record before us, however, the Examiner does not provide a sufficient factual basis to establish that Cholley would have suggested modifying Marchand’s process to include intermediate maturing and drying steps between first and second impregnation steps that involve (1) impregnating a catalytic precursor with a solution of a carboxylic acid other than acetic acid, and (2) impregnating the first-impregnated catalytic precursor with a solution consisting of at least one C1-C4 dialkyl succinate, as required by claim 1, for reasons expressed by Appellant and discussed below. Appellant argues that although Cholley discloses that a refractory oxide carrier containing group VIII and VIB metals may be impregnated with a carboxylic acid, hydrocarboxylic acid, and/or polyacid before impregnating the carrier with a C1-C4 dialkyl succinate, Cholley does not disclose conducting intermediate maturing and drying steps between these two impregnation processes. Appeal Br. 9. Appellant argues that instead Cholley discloses conducting maturing and drying steps only after completion of the impregnation process by expressly indicating that the maturing and drying are conducted “[a]t the end of the impregnation step.” Id. (citing Cholley ¶ 32). The Examiner responds to these arguments by indicating in the Answer that “Cholley expressly teaches acid impregnation involves extremely long time such as 7 days wherein a maturation thereof is apparently existed after maximum impregnation has been reached.” Ans. 19 (citation omitted) (citing Cholley ¶ 31). The Examiner also indicates, citing Appeal 2020-003217 Application 13/720,026 8 paragraph 40 of Cholley, that “Cholley also expressly teaches after acid impregnation, drying can be followed.” Ans. 20. The relied-upon disclosures in Cholley, however, do not disclose intermediate maturing and drying steps between a first acid impregnation step and a second impregnation step. More specifically, Cholley discloses that the step of impregnating the refractory oxide carrier containing the group VIII and VIB metals with a solution of one or more compounds of formula (I) or (II) “can last from 1 minute to 7 days, preferably from 10 minutes to 8 hours, at a temperature of between 0°C and 200°C, preferably at ambient temperature.” Cholley ¶ 31. Cholley discloses that “[w]hen a solution of acid(s) is introduced before the solution of organic compound(s) of formula (I) or (II), the operating conditions for the impregnation with the acid(s) are similar to those for the impregnation with the organic compound(s) of formula (I) or (II).” Id. Even if one of ordinary skill in the art would have considered these impregnation conditions to constitute a maturation step following impregnation of an acid as the Examiner asserts, Cholley nonetheless does not disclose, and would not have suggested, conducting an intermediate drying step between each impregnation process. Contrary to the Examiner’s assertion, paragraph 40 of Cholley does not “expressly teach” that acid impregnation can be followed by drying. Rather, paragraph 40 continues the discussion set forth in paragraphs 38 and 39 of an alternate approach to introducing organic compounds during production of Cholley’s catalyst. Paragraph 40 makes no mention of acid impregnation, and instead discloses in its entirety that: “It is also possible to incorporate the organic compounds of formula (I) or (II) only after the salts of metals of groups VIB and VIII. Appeal 2020-003217 Application 13/720,026 9 One or other of these steps can optionally be followed by drying and/or calcination under conditions such that at least a part of the compounds is conserved in the catalyst.” As discussed above, Cholley explicitly discloses conducting the drying step “[a]t the end of the impregnation step.” Cholley ¶ 32. One of ordinary skill in the art would have understood “the impregnation step” to refer to impregnation of both the acid and organic compound(s) of formula (I) or (II), whether conducted simultaneously or in succession, in view of Cholley’s disclosures as a whole (discussed above), which describe the impregnation step as involving introduction of the acid simultaneously with the compound(s) of formula (I) or (II), or separately from the compound(s), using similar conditions. Cholley ¶¶ 29–32. One of ordinary skill in the art, therefore, would have understood Cholley’s disclosure of subjecting the catalyst, “[a]t the end of the impregnation step . . . to an optional maturation step” followed by an “optional thermal treatment” to teach conducting a drying step only after completion of both impregnation processes. In re Burckel, 592 F.2d 1175, 1179 (C.C.P.A. 1979) (Under 35 U.S.C. § 103, a prior art reference “must be considered not only for what it expressly teaches, but also for what it fairly suggests.”); see also In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976) (“[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach, but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”). Nonetheless, the Examiner further determines in the Answer that “Cholley discloses at the end of impregnation step, maturation and thermal Appeal 2020-003217 Application 13/720,026 10 treatment can be performed,” and “[s]ince acid can be incorporated onto the catalytic precursor via an impregnation step,” it would have been obvious to one of ordinary skill in the art “to adopt such well-known maturation and thermal treatment as shown by Cholley to deposit desired acid onto the catalytic precursor before impregnating needed formula (I) thus obtaining desired catalyst having improved activity.” Ans. 19–20 (citing Cholley ¶¶ 32, 40). As discussed above, however, Cholley explicitly discloses that “the presence on the catalysts of at least one organic compound of formula (I) or (II) increases the effectiveness of the catalysts in desulfurization and in denitrogenation,” and Cholley discloses that the compound of formula (I) is preferably a C1-C4 dialkyl succinate. Cholley ¶¶ 12, 17. We find no disclosure in Cholley that teaches or would have suggested that including an acid impregnation process followed by maturing and drying steps during preparation of Cholley’s catalyst increases the desulfurization and denitrogenation activity of Cholley’s catalyst, and the Examiner does not identify any such disclosure in Cholley. Consequently, even if Cholley would have suggested conducting intermediate maturing and drying steps during Cholley’s process between a first acid impregnation step and a second C1-C4 dialkyl succinate impregnation step as the Examiner asserts, the Examiner does not provide reasoning having rational underpinning that explains why one of ordinary skill in the art would have modified Marchand’s process to include these additional steps. This is particularly the case because, as discussed above, Cholley indicates that the presence on the catalyst of C1-C4 dialkyl succinate—rather than inclusion of an acid impregnation process followed Appeal 2020-003217 Application 13/720,026 11 by maturing and drying—increases desulfurization and denitrogenation activity, and Marchand’s process already involves impregnation with C1-C4 dialkyl succinate. Simply because Marchand’s process could be modified as proposed by the Examiner, in the absence of reasoning having rational underpinning that explains why one of ordinary skill in the art actually would have so modified Marchand’s process, the proposed modification would not have been legally obvious, because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of the prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification.”). We, accordingly, do not sustain the Examiner’s rejection of claims 1, 2, 4–9, 12, 20–32, 36–49, and 53–57 under 35 U.S.C. § 103. Rejection II We turn now to the Examiner’s rejection of claims 1, 2, 4–9, and 12 for nonstatutory, obviousness-type double patenting over claims 10–19 of Marchand II in view of Cholley. We do not sustain this rejection because the Examiner’s reliance on Cholley suffers from the same reversible error as the Examiner’s reliance on Cholley in the rejection of claim 1 under 35 U.S.C. § 103, discussed above. Final Act. 10–11. Appeal 2020-003217 Application 13/720,026 12 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 2, 4–9, 12, 20–32, 36– 49, 53–57 103 Marchand, Cholley 1, 2, 4–9, 12, 20–32, 36– 49, 53–57 1, 2, 4–9, 12 Nonstatutory Double Patenting Marchand II, Cholley 1, 2, 4–9, 12 Overall Outcome 1, 2, 4–9, 12, 20–32, 36– 49, 53–57 REVERSED Copy with citationCopy as parenthetical citation