Ex Parte 7497943 et al

Patent Trial and Appeal Board

May 15, 2015

95001399 (P.T.A.B. May. 15, 2015)

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.
95/000,524 12/12/2009 7497943 IND4-29741-USRX 9423
87884 7590 05/15/2015
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
EXAMINER
KUNZ, GARY L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/15/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
95/001,399 07/16/2010 7497943 IND4-29741-USRX-1 5884
87884 7590 05/15/2015
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
EXAMINER
KUNZ, GARY L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/15/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NALCO COMPANY
Requester and Respondent

v.

BAKER HUGHES, INC.
Patent Owner and Appellant
____________

Appeal 2014-003628
Reexamination Control 95/000,524 and 95/001,399
Patent 7,497,943 B21
Technology Center 3900
____________

Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and JEFFREY B.
ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
This is a Request for Rehearing (“Req. Reh’g”) by Patent Owner under
§ 41.79(a)(1) of the Decision of the Patent Trial and Appeal Board (“the Board”)
dated Sept. 15, 2014 (“Dec. App.”) which affirmed the Examiner’s rejections of
claims 1, 5, 6, 17, 26, and 30–32 as obvious under 35 U.S.C. § 103(a) in view of

1 “The ’943 patent” or “Nguyen ’943.”
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Reynolds ’463 and Hart, and of claims 1, 17, 26 and 32 as obvious under 35 U.S.C.
§ 103(a) in view Patent Owner Admissions and Hickok. The Request for
Rehearing is denied.
Patent Owner requests rehearing regarding six points said to have been
misapprehended and/or overlooked in the Decision. Req. Reh’g 1.

1. Did the Board misapprehend the closed “consisting of” claim language with
respect to Hickok?
Patent Owner contends the Board “misapprehended the closed ‘consisting
of’ language of the Nguyen ’943 claims.” Req. Reh’g 2. Patent Owner argues that
the “‘consisting of’ language of the Nguyen ’943 Patent does not permit the
contacting of the crude oil with an oxygen-containing gas or the presence of
peroxides in the crude oil, as required by the disclosure of Hickok.” Id.
We do not agree. Hickok expressly teaches that “it may not be necessary to
add oxygen in which case the feed oil is passed directly to treating zone 10 by
means of lines 14 and 15.” Hickok, col. 2, ll. 54–64. Consequently, Patent
Owner’s argument that oxygen-containing gas is required by Hickok, yet excluded
by the “consisting of” language recited in claim 1, is unavailing.
Patent Owner also argues that there is no data or examples in Hickok of
using a carboxylic acid in the absence of peroxides. Req. Reh’g 3.
Hickok teaches the peroxides are formed in hydrocarbon mixtures. Hickok,
col. 1, ll. 19–20, 34–35, and 41–42. Hickok teaches that the peroxides:
can be removed selectively by an acid treatment according to the
process of the present invention; but in the preferred modification of
the process, the formation of the most easily formed and most
objectionable peroxides is purposely promoted prior to their removal,
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so that thereafter the treated gasoline has improved stability in
storage.
Id. at col. 1, ll. 47–54.
Hickok does not disclose that the presence of peroxides is necessary for its
acid treatment to work. Rather, Hickok simply teaches that acid treatment removes
peroxides which are formed in the gasoline. Thus, there is insufficient evidence
that peroxides are necessary to Hickok’s process, rather than being a contaminant
that is removed by acid treatment. In addition to this, we do not agree that the
“consisting” of language excludes peroxides from the hydrocarbon because
“hydrocarbon phase” appears in the claim preamble prior to the recitation of
“consisting of.”

2. Did the Board overlook the fact that Patent Owner Admissions are not prior art?
Claim 1 has four steps: 1) adding a water soluble hydroxyacid to wash
water in a refinery desalting process; 2) lowering the pH of the wash water to a pH
of 6 or below; 3) adding the wash water to the crude oil to create an emulsion; and
4) resolving the emulsion into phases using electrostatic coalescence. Claims 1,
17, 26, and 32 stand rejected over “Patent Owner Admissions” and Hickok. The
“Patent Owner Admissions” are statements made by Dr. Jerry Weers, a named
inventor of the ’943 patent. Dec. App. 4. Dr. Weers testified during a hearing for
a preliminary injunction in a related district court litigation that, prior to filing the
’943 patent, it was known to add an acid to wash water prior and that it was known
that acid adjusts the pH. Id. at 4–5. Dr. Weers also testified that it was known to
create an oil and water emulsion and to use an electrostatic field to separate the
emulsion into oil and water again, steps as in 3) and 4) of the claimed method. Id.
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Patent Owner contends that the “Patent Owner Admissions are not prior art
as they did not exist prior to 9/1/2009, the date of the Preliminary Injunction
hearing in U.S. District Court.” Req. Reh’g 4. Patent Owner also contends that
admission can only be used in conjunction with a patent or printed publication,
“which they are not.” Id. Patent Owner also argues that the admissions were
improperly relied upon because they are not corroborated with testimony or
documentary evidence. Id.
These arguments are not persuasive. While the Admissions were made on
Sept. 1, 2009, Dr. Weers was testifying about the state of the art prior to the filing
date of the ’943 patent. Weers Transcript 37:6–12. Patent Owner did not provide
arguments or evidence that this testimony did not constitute prior art to the ’943
patent. M.P.E.P. § 2617.III specifically states that admissions “by the patent
owner as to any matter affecting patentability may be utilized to determine the
scope and content of the prior art in conjunction with patents and printed
publications, whether such admissions are found in patents or printed publications
or in some other source.” In this case, Patent Owner’s admissions are combined
with Hickok, which is printed prior art publication. Thus, the rejection is
compliant with M.P.E.P. § 2617.III.
With respect to the requirement that Dr. Weers’s testimony must be
corroborated or supported by documentary evidence, the background section of the
’943 patent acknowledges that the desalting process prior to the ’943 patent
involves creating an emulsion with oil and wash water, and then resolving the
emulsion back into the oil and wash water phases (col. 1, ll. 43–67) as claimed and
as testified by Dr. Weers, corroborating his testimony. Hickok was relied upon for
teaching the addition of acid as claimed. Dec. App. 9–10. Thus, even if
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corroboration is necessary, the ’943 patent provides adequate evidence to support
Dr. Weers’s testimony.

3. Did the Board misapprehend the fact that Reynolds teaches away from the
claimed invention?
Patent Owner contends that Reynolds teaches away from making emulsions
and that the Board ignored this teaching. Req. Reh’g 4–5. Specifically, Patent
Owner cites the following disclosure from Reynolds ’463 as a teaching away:
“One difficulty with the addition of base, however, is the formation of emulsions,
which can interfere with effective separation. Therefore the most preferred pH is
around 6, especially for naphthenic acid crudes.” Reynolds ’463, col. 3, ll. 33–37
(emphasis added).
As stated by Requester, the skilled worker would have understood that
Reynolds ’463 is not teaching away from all emulsions, but rather is teaching that
stable emulsion can be difficult to resolve and that lowering the pH facilitates
“effective separation.” Requester Resp’t Br. 6. The evidence supports this
position.
Reynolds ’463 teaches shaking the acid solution and oil and then allowing it
to separate overnight. Reynolds ’463, col. 3, l. 67–col. 4 l. 1. Reynolds ’463 also
teaches “the feedstock to be demetalized is intimately and thoroughly mixed with
an aqueous solution of citric acid or its salts.” Id. at col. 2, ll. 5–7. Such disclosure
would reasonably be understood to include emulsions since intimate and thorough
mixing is characteristic of forming an emulsion. (See Dec. App. 12; RAN 23.)
Furthermore, Reynolds ’463 teaches that the feed “can then be handled in the same
manner as any other carbonaceous feed, and processed by conventional
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hydroprocessing techniques” and that “the physical separation process” can
“ordinarily to be done in a conventional crude oil desalter, which is usually used
for desalting petroleum crudes prior to hydroprocessing.” Id. at. col. 2, l. 57–63. It
was well known prior to filing the ’943 patent to form emulsions between the oil
and water phases and then to resolve the emulsions. ’463 patent, col. 1, ll. 53–67.
Thus, even if Reynolds ’463 did not produce an emulsion, emulsions were
conventionally made during crude oil desalting, the same process to which
Reynolds is directed, and Reynolds directs the skilled worker to use conventional
hydroprocessing procedures in a conventional desalter. (See Dec. App. 13.)
In addition to this, Reynolds ’463 teaches including a demulsifer. Reynolds
’463, col. 3, ll. 66–67. A demulsifer is used to break or separate an emulsion.
Patent Owner remarks dated Jan. 23, 2012, pp. 45, 53, 55, and 56. Thus, rather
than teach away from emulsions, Reynolds ’463 utilizes emulsions in order to
perform its method.
In sum, the evidence does not support Patent Owner’s position that Reynolds
’463 teaches away from using the conventional step in crude oil desalting of
forming an emulsion.

4. Did the Board misapprehend the “consisting of” claim language with respect to
the features required in Hart?
Patent Owner argues:
With respect to adding the water-soluble hydroxyacid to the
wash water (Nguyen ’943) versus adding the chelant directly to the
liquid hydrocarbon (Hart, noted as (b) above), the Board noted at the
bottom of page 17 of the Decision that “Either step works, and with
only two choices either alternative would have been obvious.”
Appellant respectfully submits however, that this is still a choice to be
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made and in the obviousness analysis, there must be a reason for
making one choice over the other.
Req. Reh’g 6.
Patent Owner did not quote the full passage in which this sentence appears.
In the Decision, a reason was given for adding the acid to the wash water as
claimed.
Significantly, the hydroxyacid in each case – Reynolds, Hart,
and the claims – is still being used for the same purpose, i.e., to form a
complex with iron and other contaminants in the crude oil. The
evidence indicates that the acid is effective in complexing with the
iron in the crude oil whether the acid is 1) introduced into the crude
oil by combining it with an aqueous solution (Reynolds ’463) or 2) by
direct addition (Hart). Either step works, and with only two choices,
either alternative would have been obvious.
Dec. App. 17 (footnote omitted)
In other words, the addition of acid to the wash water is described in
Reynolds ’463, and thus, it would have been obvious to have utilized this step for
its known and expected properties in removing metals from a liquid hydrocarbon.

pH
Claim 1 recites “lowering the pH of the wash water to 6 or below.” Patent
Owner argues that the Board erred finding it would have been obvious to have
picked the claimed pH range. Req. Reh’g 6. Patent Owner also contends that the
“addition of base taught by Reynolds ’463 is not allowed by the consisting of claim
language of Nguyen ’943, and is in any event an element taught by a cited
reference that one having ordinary skill in the art must consider and understand not
to choose.” Id. at 6–7.
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As explained in the Decision on Appeal, while Reynolds ’463 may describe
addition of a base in certain embodiments, Reynolds also describes and claims a
process which does not require the addition of a base. Dec. App. 15:5–12. Patent
Owner did not identify a defect in these findings.
With respect to the claimed pH of 6 or below, the Decision made specific
findings that Hart teaches a pH of 6, and Reynolds teaches a preferred pH of 6, as
well as pHs which are lower. Id. at 15. Because the claimed range overlaps with
the ranges in Reynolds and Hart, it would have been obvious to have chosen it. It
is well-established that, when there is a range disclosed in the prior art, and the
claimed invention overlaps or falls within that range, there is a presumption of
obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron Grip
Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).

5. Did the Board overlook that Hart teaches away from the claimed invention?
Claim 1 requires adding the water-soluble hydroxyacid to the wash water.
Patent Owner contends that the “Board misapprehended the significant teaching in
Hart that adding acid to the water did not improve the extraction of iron.” Req.
Reh’g 7. Patent Owner argues that the Board relied on a comparative test “where
the chelant was added directly to the water [ ] phase.” Id. This comparative
example shows that “addition of the organic solution of the oxalic acid to the water
layer at pH 8 did not improve iron extraction.” Hart, col. 7, ll. 58–67.
The Decision on Appeal did not ignore the aforementioned disclosure in
Hart. We stated:
Hart considered itself an improvement over Reynolds prior art process
in which the hydroxyacid is added to the aqueous solution and then
combined with the crude oil. It is obvious to use a prior art process,
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even if such process was taught to be inferior. See [In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994)].
Dec. App. 17.
Patent Owner also contends that Board erred in stating “that it does not
matter how the oil, water and acid come together – the end result is the same.”
Req. Reh’g 8. Patent Owner argues that it does make a difference how the
components come together because the chemistry is different when the acid is
added directly to the hydrocarbon rather than in the wash water. Id. According to
Patent Owner, when the chelate is added directly to the hydrocarbon, it is “easier to
extract.” Id.
Patent Owner did not provide persuasive factual evidence or testimony to
support the argument that the chemistries are different. Nonetheless, even if we
assume this to be the case, Patent Owner does not deny that a metal complex is
formed in both Reynolds ’463 and Hart. Thus, it is still true that “the acid is
effective in complexing with the iron in the crude oil whether the acid is 1)
introduced into the crude oil by combining it with an aqueous solution (Reynolds
’463) or 2) by direct addition (Hart).” Dec. App. 17.
While Hart’s treatment may be more effective in removing metal, it still
would have been obvious to have utilized Reynolds ’463’s step of adding acid to
the wash water, even if it was inferior, because it is obvious to use a known
process for its expected result in chelating the metal ions.
To the extent that the statement on page 17 of the Decision on Appeal could
be read to say that there is no difference when the acid is added to the hydrocarbon,
we withdraw such statement and do not rely upon it.

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6. Secondary considerations
In considering the secondary consideration, the Decision appeal concluded,
based on the evidence that the “success of the claimed invention therefore appears
not to be due to the merits of the claimed invention, but rather to the use of the
hydroxycarboxylic acids described in Hickok and Reynolds.” Dec. Appeal 21.
Patent Owner contends that the “Nguyen ’943 claims cover an entire method for
the extraction of metals and amines, not just hydroxy acids. It is the entire method
that is claimed and not only the acids listed in the claims.” Req. Reh’g 9.
However, evidence was not provided that it was all the steps of the claimed method
in combination that accounted for the commercial success, rather than just the
specific hydroxyacid utilized. Specifically, the evidence shows that the claimed
steps are conventionally utilized in refinery desalting process, except for the
addition of a hydroxyacid. As stated in the Decision on Appeal, the amount of acid
used, type of acid, the pH, and other conditions utilized in the EXCALIBUR
process were not disclosed, so it could not be discerned whether it was such
conditions combined that were responsible for the reported commercial success.
Dec. App. 21.

DENIED

peb
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Patent Owner:

MOSSMAN, KUMAR AND TYLER, PC
P.O. BOX 421239
HOUSTON, TX 77242

Third Party Requester:

DAVIDSON , DAVIDSON & KAPPEL, LLC
485 7TH AVENUE
14TH FLOOR
NEW YORK, NY 10018

K&L GATES LLP
P.O. BOX 1135
CHICAGO, IL 60690