TOTAL RAFFINAGE MARKETING et al.

Patent Trials and Appeals Board

Apr 20, 2021

2020003217 (P.T.A.B. Apr. 20, 2021)

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.
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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).

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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”).
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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.
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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
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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
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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
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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.
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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
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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
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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.

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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