Ex Parte 7497943 et al

Patent Trials and Appeals Board

Sep 12, 2014

95000524 - (D) (P.T.A.B. Sep. 12, 2014)

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 09/15/2014
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
09/15/2014 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 09/15/2014
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
09/15/2014 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 B2
Technology Center 3900
____________

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

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims 1, 5, 6, 17, 26, and 32 in the above-
identified inter partes reexamination of US 7,497,943 B2. The Board’s
jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm.

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Patent 7,497,943 B2

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I. BACKGROUND
The patent in dispute in this appeal is US 7,497,943 B2 (“the ’943 patent”)
which issued March 3, 1999. The named inventors are Tran M. Nguyen, Lawrence
N. Kremer, and Jerry J. Waters. The Patent Owner is Baker Hughes Inc. (“Patent
Owner”). Appeal Brief (“Appeal Br.”) 4 (June 11, 2013).
Requests for inter partes reexamination of the ’943 patent were filed
December 12, 2009 and July 16, 2010 under 35 U.S.C. §§ 311-318 and 37 C.F.R.
§§ 1.902-1.997. Right of Appeal Notice (“RAN”) 2 (March 11, 2013). The Third
Party Requesters are Assateague Oil Inc. and Nalco Company, respectively. Id.
The inter partes reexaminations were subsequently merged. Id.at 2-3.
Patent Owner appeals the Examiner’s decision to reject claims 1, 5, 6, 17,
26, and 30-32. Appeal Br. 4. Nalco (“Requester”) filed a Respondent Brief
(“Resp’t Br.”) on July 11, 2013 in response to Patent Owner’s Appeal Brief.
Assateague did not file a respondent brief.
An oral hearing was held August 6, 2014 with both Patent Owner and
Requester in attendance. A transcript of the hearing will be entered into the record
in due course.
Claim 1 is representative and reads as follows:
A method of transferring metals and/or amines from a
hydrocarbon phase to a water phase in a refinery desalting process
consisting of:
adding to a wash water, an effective amount of a composition to
transfer metals and/or amines from a hydrocarbon phase to a water
phase comprising at least one water-soluble hydroxyacid selected
from the group consisting of glycolic acid, gluconic acid, C2-C4 alpha-
hydroxy acids, malic acid, lactic acid, poly-hydroxy carboxylic acids,
thioglycolic acid, chloroacetic acid, polymeric forms of the above
hydroxyacids, poly-glycolic esters, glycolate ethers, and ammonium
salt and alkali metal salts of these hydroxyacids, and mixtures thereof,
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lowering the pH of the wash water to 6 or below, before, during
and/or after adding the composition;
adding the wash water to crude oil to create an emulsion; and
resolving the emulsion into hydrocarbon phase and an aqueous
phase using electrostatic coalescence, where at least a portion of the
metals and/or amines are transferred to the aqueous phase.
Claim 26 is also an independent claim. Claims 5, 6, 17, and 30-32 are
dependent claims.
The claims stand rejected by the Examiner as follows:
1. Claims 1, 5, 6, 17, 26, and 30-32 as obvious under 35 U.S.C. § 103(a) in
view of Reynolds ’463
1
and Hart.
2

2. Claim 1, 5, 6, 17, 26, and 30-32 as obvious under 35 U.S.C. § 103(a) in
view of Reynolds’463 and SU ‘520.
3

3. Claims 1, 17, 26 and 32 as obvious under 35 U.S.C. § 103(a) in view
Patent Owner Admissions,
4
and Hickok.
5

4. Claims 1, 17, 26 and 32 as obvious under 35 U.S.C. §103(a) in view of
Reynolds’463 and Patent Owner Admissions.
We AFFIRM Rejections 1 and 3 of all the rejected claims 1, 5, 6, 17, 26, and
30-32. Because we have affirmed the rejections of all the claims which stand
rejected, we do not reach Rejections 2 and 4.

1
John Reynolds, US 4,789,463 issued December 6, 1988.
2
Rosalie B. Hart et al., US 5,078,858 issued January 7, 1992.
3
V.Kh. Shaimardanov et al., SU 1,666,520 A1 August 8, 1989.
4
Testimony by Jerry Weers, Ph.D., in the Transcript from the Preliminary
Injunction Hearing on September 1, 2009. Dr. Weers is one of the named
inventors of the ’943 patent and is an employee of the Patent Owner. Weers Decl.
1 (dated July 23, 2012).
5
J.E. Hickok et al., US 2,767,123 issued October 16, 1956.
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DESALTING CRUDE OIL
The claims are drawn to a refinery desalting process for crude oil. In the
“BACKGROUND OF THE INVENTION” of the ’943 patent, it is stated that “the
desalting of crude oil has been practiced for many years.” ’943 patent, col. 1, ll.
21-22. The patent explains that “[d]esalting is necessary prior to further processing
[of crude oil] to remove [contaminant salts] and other inorganic materials that
would otherwise cause fouling and deposits in downstream heat exchanger
equipment and/or form corrosive salts detrimental to crude oil processing
equipment.” Id. at col. 1, ll. 38-42.
During the hearing for a preliminary injunction, Dr. Jerry Weers, an inventor
of the subject matter of the ’943 patent, testified about the desalting process:
A desalting process is the first step in the refinery process.
Crude oil comes out of a storage tank, and the desalter is the first unit
in the refinery that this crude oil sees.
This oil comes to the units; it is heated; it is treated with various
chemicals to help this process happen. Water is mixed in with the
crude oil. It goes through then a mix valve, is the terminology. It's
basically like a blender that creates an emulsion out of the oil and
water so you get very good contact and very good removal of
contaminants into the water phase. This mixture then goes into a big
vessel where you have an electric grid.
Weers Transcript 37:13-25.

Q. What are the parts of the standard desalting process that everybody
performs?
A. Well, crude oil will come from the storage tanks in the refinery. . . .
[After heating, it is] then blended with water from some source in the
refinery. It goes through a mix valve; so, you make the emulsion out
of the water and oil. It gives you a very good dispersion so you get
good contact of the different materials. And then it goes into a vessel
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that has the grids and the electric field as part of the technology that's
used to separate again the water and oil once they've been mixed.
Id. at 40: 1-16
A. In every desalter that I've ever seen there's always a demulsifier;
there's always heating going on; there's always a mix valve to create
the oil/water emulsions that basically give you the good contact of the
oil and water phases; there is always an electrostatic field in these,
electric grid. The electricity and the electric field helps that water and
oil break again.
Id. at 70:16-22.
Q. Now, adding an acid to the wash water was known prior to filing
your patent, right?
A. Adding different acids, yes. I mean, addition of an acid to change
pH is a known process.
Id. at 123:19-23.
Thus, Dr. Weers acknowledged that the prior art desalting process involves
mixing water with crude oil in a desalter to make an emulsion, and then resolving
the emulsion into water and oil using an electrostatic grid.

REJECTION 3. PATENT OWNER ADMISSIONS AND HICKOK
With respect to claim 1, the Examiner found that the “only limitation
missing from the Patent Owner Admissions [in the Weers Declaration] is the
specific hydroxyl-carboxylic acid [the latter term is used by the Examiner
interchangeably with “hydroxyacid,” the term recited in the claims] required to
chelate the metal ions in the crude oil.” RAN 14. However, the Examiner found
that “Hickok discloses the extraction of metal ions from gasoline (hydrocarbon
phase) using a 5% to 10% by volume amount of a wash water containing a
hydroxycarboxylic acid (glycolic acid, malic acid, or lactic acid at 2:64-72). See
[Hickok], column 5, lines 38-42.” Id.
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The Examiner concluded that it would have been obvious to one of ordinary
skill in the art “to have modified the teachings of Patent Owner Admissions by
adding a water-soluble hydroxyacid such as lactic acid to the wash water at a pH of
6 or below to the wash water as taught by Hickok in the standard crude oil
desalting process as taught in the Patent Owner Admissions in order to improve the
efficiency of transferring metal ions from crude oil into the wash water.” Id. at 15.
Patent Owner contends that Hickok is non-analogous prior art. Appeal Br.
26. According to Patent Owner, Hickok concerns the treatment of gasoline, not
“crude oil desalting [as claimed], and does not contain, much less discuss, concepts
and terms used by Patent Owner Admissions such as ‘desalter,’ ‘desalting,’ ‘crude
oil,’ ‘emulsion,’ ‘electrostatic field’ or ‘wash water.’” Id. Patent Owner argues
that the Examiner did not explain why the skilled worker looking at the Patent
Owner Admissions would have been “motivated to look to Hickok to improve the
desalting process.” Id. Rather, Patent Owner contends that the Examiner
improperly used hindsight in reaching the obviousness determination. Id.
We do not agree that Hickok is non-analogous prior art. Prior art which is
pertinent to the claimed invention is referred to as “analogous” prior art. It is well-
established that there are two criteria to be applied when determining whether a
reference is analogous prior art: (1) whether the reference is from the “same field
of endeavor” as the claimed invention, and (2) if the reference is not within the
same field of endeavor, “whether the reference is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656,
658-59 (Fed. Cir. 1992). “References are selected as being reasonably pertinent to
the problem based on the judgment of a person having ordinary skill in the art.” In
re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). When neither criterion is met
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from the perspective of a person having ordinary skill in the art, the reference is
deemed “non-analogous” and is not considered pertinent to the § 103
determination.
In this case, the’943 patent is concerned with same problem as Hickok:
removing iron and other metals from a hydrocarbon. Specifically, the ’943 patent
identifies iron as a contaminant which is to be removed by desalting.
As mentioned, much of the solids encountered during crude oil
desalting consists of iron, most commonly as particulate iron such as
iron oxide, iron sulfide, etc.
’943 patent, col. 2, ll. 21-23.
In addition to complicating the desalter operation, iron and other
metals are of particular concern to further downstream processing.
This includes the coking operation since iron and other metals
remaining in the processed hydrocarbon yields a lower grade of coke.
Removing the metals from the crude oil early in the hydrocarbon
processing stages is desired to eventually yield high quality coke as
well as to limit corrosion and fouling processing problems.
Id. at col. 2, ll. 28-36.
Hickok’s process also involves removing metals from a liquid hydrocarbon:
The present invention is concerned with an improved process for
producing stable gasoline. The invention is concerned with an
operation wherein peroxides and other deleterious constituents present
in a hydrocarbon mixture boiling in the motor fuel or gasoline boiling
range are selectively removed by treating the hydrocarbon mixture
with an acid. Among the deleterious constituents are small amounts of
copper and iron introduced into the gasoline during ordinary refining
processes.
Hickok, col. 1, ll. 16-25.
Because Hickok is concerned with the same problem as the inventors of the
’943 patent, it is reasonably pertinent to the claimed subject matter and was
properly cited by the Examiner as analogous prior art.
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Patent Owner further distinguishes Hickok on several bases. First, Patent
Owner states “there is no mention of an acid in the Patent Owner Admissions cited
by the Examiner, so there can be no improvement of efficiency by using the
Hickok acids-there is nothing to improve.” Id. at 27. Second, Patent Owner states
“there is no reasonable likelihood of success in transferring metal salts to the water
phase because Hickok's motor fuel/gasoline is fundamentally different from crude
oil . . .. Because of this crucial difference, there is no reason to believe that the
Hickok approach would work at all with crude oil . . ..” Id. Patent Owner
contends that gasoline and crude oil are “vastly different in composition,” and
identify differences between the two. Id.
As to the first argument, it is admitted in the background of the ’943 patent
that contamination with iron and other metals is problem during the desalting
process. ’943 patent, col. 2, ll. 7-36. Since Hickok teaches treating a hydrocarbon
with a hydroxycarboxylic acid to remove iron, the skilled worker would have
reasonably looked to Hickok to improve the efficiency of iron removal from a
hydrocarbon during the desalting process. Hickok, col. 1, ll. 16-30.
While gasoline may not be identical to crude oil, it is not disputed that both
are liquid hydrocarbons. Patent Owner identifies differences between gasoline and
crude oil, but does not provide sufficient evidence that such differences would
have led one of ordinary skill in the art to reasonably expect that Hickok’s acid
would not work in a crude oil when both are hydrocarbon liquids. Indeed, it was
well know that gasoline is derived from crude oil. Gary,
6
p. 49 (Table 4.2) and 54.

6
James H. Gary et al., Petroleum Refining, Technology and Economics, 3d.
Marcel Dekker, Inc., 1994.
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Furthermore, in one of the examples in which Hickok employed lactic acid
to treat gasoline, Hickok stated: “since other deleterious constituents were
simultaneously removed by the lactic acid, which has an affinity for ions of copper
or iron, the actual stability of the gasoline in normal storage was improved, as
shown by the following example.” Hickok, col. 5, ll. 1-8. Lactic acid is one of the
claimed acids and is specifically recited in claim 1. ’943 patent, original claim 1.
In other words, deleterious constituents, such as iron and other metal ions, common
to both liquid hydrocarbons, according to Hickok, can be extracted (desalted) via
reaction with a hydroxycarboxylic acid, such as lactic acid, in a wash water as
indicated supra. Thus, one of ordinary skill in the art would have had a reasonable
expectation that the same deleterious metal ions in crude oil or gasoline would
react to the acid taught by Hickok for the desalting purposes. On this record,
Patent Owner has not provided an adequate explanation and/or evidence as to why
the acid in Hickok would be expected to behave differently in the crude oil from
which the gasoline is derived. Nor is there any objective evidence before us to
doubt that chemistry in the crude oil hydrocarbon would be sufficiently different
than the chemistry in the gasoline hydrocarbon such that lactic acid would
completely lose its affinity for iron as taught by Hickok.
In sum, Patent Owner did not provide sufficient evidence to rebut the
Examiner’s determination that Hickok’s acid would have been expected to be
effective in a conventional crude oil desalting process as claimed.

Wash water additional and removal
Patent Owner contends “the Nguyen '943 claims recite adding the
composition to the wash water; Patent Owner Admissions do not recite that a water
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soluble hydroxyacid, or any acid, is always added to wash water.” Appeal Br. 24.
Patent Owner further states “that while Dr. Weers acknowledged that adding acids
to wash water was known, he did not admit that it was a known claim element.
Nor did Dr. Weers state that the pH of the wash water should be lowered to 6 or
below before, during, or after adding the composition.” Id. at 26. Patent Owner
also argued that there is “no teaching, disclosure or hint in Hickok that this
aqueous solution water is removed from the gasoline so treated.” Appeal Br. 28.
These arguments are not persuasive.
Hickok’s acids are added to the fuel hydrocarbon in an aqueous solution.
Hickok, col. 3, ll. 13-14. “The motor fuel is treated with about 0.1 % to 10% by
volume of the acid solution, preferably with from about 1 % to 5% by volume.” Id.
at col. 3, ll. 23-26. In a conventional desalting process, an aqueous solution – the
wash water – is added to crude oil hydrocarbon. It would have been obvious,
therefore, to have added the acid to the wash water in the conventional process
since wash water is aqueous as is Hickok’s acid solution. Addition of the acid
would lower the pH, meeting the corresponding step of the claim.
After treatment with the acid solution, Hickok teaches:
The treated oil is withdrawn from zone 6 by means of line 9 and
passed to an acid contacting zone 10 wherein the same is contacted
with acid which is introduced by means of line 11 and removed by
means of line 12. This acid treatment removes from the gasoline or
motor fuel the objectionable copper and iron as well as the peroxides.
Hickok, col. 2, ll. 45-51 (emphasis added).
Line 12 is shown in Hickok’s figure as removing “spent acid” from the
“product.” Thus, contrary to Patent Owner’s argument, there is an express
teaching in Hickok to remove the aqueous acid solution from the treated oil.
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Patent Owner also argues that Hickok adds metal materials to the fuel, while
the’943 patent is drawn to removing such metals. Appeal Br. 28. However,
Hickok expressly teaches that it is not necessary to add metals:
While the invention has been described specifically with respect
to the deliberate addition of either iron or copper, and in the treatment
of oil with an oxygen containing gas, it is to be understood that the
motor fuel may have sufficient copper and iron dissolved therein.
Under these conditions the feed oil is passed directly to zone 6 by
means of lines 14 and 15.
Hickok, col. 2, ll. 54-61. This step bypasses line 3 where the addition of the
cooper and iron occurs. Id. at col. 2, ll. 30-33.

REJECTION 1. REYNOLDS ’463 AND HART
The Examiner found that Reynolds ’463 describes adding a hydroxyacid to
wash water, lowering the pH, mixing the wash water with the crude oil, and then
separating the wash water phase from the crude oil. RAN 6-7. The Examiner
acknowledged that “Reynolds does not explicitly disclose the use of a mixing
value to create an emulsion or an electrostatic dehydrator in a desalter to separate
the aqueous phase from the crude oil phase.” Id. at 7. However, the Examiner
found that “Hart does disclose using a desalter that contains a mixing valve to
create an emulsion of crude oil and wash water which is then resolved in a
desalting apparatus by electrostatic coalescence.” Id.
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art “to modify the method of Reynolds by specifically using a mixing
valve in a commercial desalter to form an emulsion between crude oil and wash
water containing a hydroxycarboxylic acid (malic acid, lactic acid or citric acid) at
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around pH 6, and then to resolve the emulsion by electrostatic coalescence as
taught by Hart.” Id.

Emulsions
Although Reynolds ’463 did not expressly teach that an emulsion was made
when its oil and water was shaken or mixed (Reynolds ’463, col. 3, l. 68 to col. 4,
l. 1), the Examiner concluded that its description of intimate and thorough mixing
of the oil with an aqueous phase indicated an emulsion was formed. RAN 23. The
Examiner argued that this finding is “supported by the traditional definition of an
emulsion: ‘a mixture of two or more liquids that are immiscible’ (Wikipedia).” Id.
The Examiner stated that the “shaking of two immiscible liquids in a separatory
funnel forms an emulsion just as surely as a mixing valve in a desalter creates an
emulsion. The former emulsion is a temporary emulsion . . ., while the latter
intensive emulsion requires the resolving power of electrostatic coalescence.” Id.
Patent Owner argues the Examiner’s finding is inconsistent with other
disclosure in Reynolds ’463 which teaches away from making emulsions (Resp’t
Br. 6-7): “[o]ne 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.
Nonetheless, we need not resolve this issue because emulsions made of oil
and aqueous solutions comprising acid are described by Hart.
7
RAN 31. As found

7
We note that another Reynolds patent, US 4,853,109, which was cited by Hart as
teaching adding acids in the form of aqueous solutions to oil, and then forming
emulsions, has a substantially identical disclosure as Reynolds’463. Hart, col. 1, ll.
48-56.
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by the Examiner, Hart describes using a hydroxyacid (citric acid and oxalic acid)
to remove iron from crude oil, and performs the process on an emulsion made of
the crude oil and water, as recited in the claims. Hart, Abstract; col. 2, ll. 18-23,
32-38, and 43-47; col. 6, ll. 62-68.
Methods of extracting iron species, such as iron naphthenate, and iron
sulfides, from a liquid hydrocarbon, such as crude oil are disclosed. A
chelant selected from oxalic or citric acid is added directly to the
liquid hydrocarbon and mixed therewith. Then, wash water is added to
form a water in oil emulsion. The emulsion is resolved, with iron
laden aqueous phase being separated.
Hart, Abstract.
Thus, a preponderance of the evidence supports the finding that hydroxyacid is
capable complexing iron, and other metals, in both emulsions (Hart) and mixtures
(Reynolds). Thus, even if Reynolds is found not to describe an emulsion, there is
still the teaching by Hart that the claimed hydroxyacids reduce the amounts of
metals when an emulsion step is carried out. The Examiner specifically cited
Hart’s teaching of a making an oil and water emulsion. RAN 7, 30-31, and 33.
Although the Examiner relied upon Hart for teaching electrostatic grids to facilitate
separation of an oil and water emulsion, the Examiner also found:
Hart discloses the extraction of iron from crude oil using
hydroxyacids as the chelating agents. Hart further discloses the
addition of the hydroxyacid directly to the crude oil as well as adding
a wash water containing said hydroxyacid (6:58 to 7:40). Hart further
discloses the resolution of an emulsion in a desalter using electrostatic
coalescence (2:43-52; 6:58 - 7:40).
RAN 33.
Furthermore, Hart clearly teaches the use of electrostatic coalescence
to separate the crude oil phase from the aqueous phase (wash water)
containing a hydroxyacid (citric acid) and the chelated metal ions
(Abstract, 2:43-52; claims 1, 7 and 17).
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RAN 41.
Based on this disclosure, it does not appear that the Examiner ignored Hart’s
disclosure and used the ’943 claims as a blueprint. See Appeal. Br. 20. Patent
Owner’s analysis appears to overlook the fact that the prior art in both
Reynolds’463 and Hart teach that hydroxyacids are effective in removing metals
from crude oil, and that this process works for both emulsions and non-emulsions.

Wash water
Patent Owner distinguishes the claimed subject matter from Reynolds ’463
on the basis that the claims comprise adding wash water to the crude oil, where
Reynolds ’463 describes adding an “aqueous solution.” Appeal Br. 13. Patent
Owner explains what the term “wash water” means, asserting that it is not “pure
water” as used in Reynolds ’463. Id. However, Patent Owner did not provide
adequate evidence that Reynolds ’463’s “aqueous solution” would be understood
by one of ordinary skill in the art to mean only “pure water” or that it would
exclude wash water from being used. Furthermore, as pointed out by the
Examiner, Hart discloses utilized wash water in its emulsion. Hart, col. 6, ll. 62-
68; RAN 33. For example Hart teaches:
Methods of extracting iron species, such as iron naphthenate, and iron
sulfides, from a liquid hydrocarbon, such as crude oil are disclosed. A
chelant selected from oxalic or citric acid is added directly to the
liquid hydrocarbon and mixed therewith. Then, wash water is added
to form a water in oil emulsion. The emulsion is resolved, with iron
laden aqueous phase being separated.
Hart, Abstract.
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Thus, it was reasonable for the Examiner to conclude that the aqueous
solution taught by Reynolds ’463, as further explained by Hart, includes wash
water.

Base
Patent Owner argues that Reynolds ’463 requires the addition of a base,
while a base is excluded by the “consisting of” language in claim 1. Appeal Br.
14. The factual evidence does not support a finding that Reynolds ’463 requires a
base. As argued by Respondent, claim 1 of Reynolds ’463 recites “mixing said
hydrocarbonaceous feedstock with an aqueous solution of a metals sequestering
agent comprising hydroxocarboxylic acids, salts thereof” and does not recite a step
of adding a base. Resp’t Br. 10. Reynolds ’463 also describes using acid only,
albeit at lower removal efficiencies. Reynolds ’463, col. 5, ll. 8-9. “A known or
obvious composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Moreover, Hart’s process, which uses
the same hydroxyacids as in Reynolds ’463, and overlaps in pH, does not teach
adding a base to adjust pH.
pH
The claims recite “lowering the pH of the wash water to 6 or below.”
Patent Owner argues the pH ranges disclosed in Reynolds ’463 and Hart are basic,
while the claimed range is acidic at pH 6 or below. Appeal Br. 18. Hart teaches a
pH of 6-11. Hart, col. 2, ll. 13-14. Reynolds ’463 teaches a pH range about 2,
preferably 5-9, and “the most preferred pH is around 6. Reynolds ‘463, col. 3, ll.
31-37. Any of these pHs would therefore have been obvious to pick, including pH
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6 as recited in the claims, a value which is disclosed by both Reynolds and Hart.
Patent Owner’s contention that Hart teaches a pH well above the claim range
ignores the fact that Hart describes pH 6 as suitable, and that such pH is taught by
Reynolds as preferred. Appeal Br. 19.
With respect to the specifically claimed range, the “law is replete with cases
in which the difference between the claimed invention and the prior art is some
range or other variable within the claims…in such a situation, the applicant must
show that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.” In re Woodruff,
919 F.2d 1575, 1578(Fed. Cir. 1990). Patent Owner has not provide adequate
evidence that the claimed range produces unexpected results, rather than simply
being routine optimization as taught by Reynolds ’463 to achieve iron binding.
Reynolds’463, col. 3, ll. 31-33 (“in order for the iron to bind appropriately to the
citric acid, the pH should be above 2, and preferably 5 to 9.”)
Addition of acid to crude oil
Hart adds the acid directly to the crude oil, in contrast to what is claimed and
described in Reynolds ’463. Based on this and other differences, Patent Owner
contends the teachings in Reynolds ’463 and Hart are conflicting and “that to
combine the references would destroy them for their intended purpose since they
are at odds with one another.” Appeal Br. 19. Patent Owner contends that the
Examiner is cherry picking the teachings, while ignoring other teachings in the
publications. Id.
Hart cited a different Reynolds patent (US 4,853,109) than the one cited in
this reexamination which, like Reynolds ’463, dissolves the acid in an aqueous
solution and then adds it to the liquid hydrocarbon. Hart teaches:
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The present invention provides enhanced iron removal by the use of
oxalic acid or by citric acid. In contrast to the Reynolds patent, the
chelant is added directly to the liquid hydrocarbon instead of being
added to the hydrocarbon in the form of an aqueous solution.
Hart, col. 2, ll. 5-11.
Hart teaches that an emulsion is formed:
After the [oxalic acid or citric acid] chelant is added to and
mixed with the liquid hydrocarbon, water is added to the resulting
mixture of hydrocarbon-chelant in an amount of about 1-15% water
based on the weight of the liquid hydrocarbon. Preferably, water is
added in an amount of about 5-10 wt.%. The w/o emulsion thus
formed is resolved with iron laden aqueous phase being separated.
Id. at col. 2, ll. 32-38.
Thus, 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, even if such process was
taught to be inferior. See Gurley, 27 F.3d at 553.
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.
8

8
We are aware that during the prosecution of the ’943 patent a declaration by
inventor Nguyen was filed in which Mr. Nguyen stated “where the glycol was
added in the method made a significant difference in how much iron was
removed.” Nguyen Decl. 4 (February 7, 2007). Mr. Nguyen stated that when the
glycolic acid was added to the wash water it was more effective then when added
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Weers Declaration
A declaration by Dr. Weers was provided by Patent Owner as objective
evidence in support of non-obviousness. Dr. Weers testified that a commercial
embodiment of the technology described and claimed in ’943 patent is known as
EXCALIBUR Technology. Weers Decl. 3.
Dr. Weers testified: “Based on my personal knowledge, the EXCALIBUR
Technology is an exact embodiment of claim 1 of the ’943 patent, requiring the
performance of no additional steps not included in Claim 1 of the ’943 patent.”
Weers Decl. at 5. While the Examiner required additional evidence to substantiate
Dr. Weers’s assertion (RAN 46), the Examiner did not provide sufficient reason to
doubt it.
Dr. Weers testified that the first full-scale trial of the claimed method to
remove metals, including calcium, from crude oil was on May 10, 2004. Weers
Decl. 6. Dr. Weers testified that the ’943 method was compared to a “competing
method which uses polyacrylic acid.” Id. at 7. The competing method, according
to Dr. Weers, did not function for more than two days. Id. Dr. Weers further
testified in his declaration that the technology was provided to “the Sunoco
Refinery . . . to process Doba crude oil using the Nguyen ’943 Method Branded as
the EXCALIBUR Technology.” Id.
Dr. Weers testified that Patent Owner “has developed approximately a 95+%
market share in the United States, and worldwide, for both the processing of crude
oil with high calcium concentrations and the processing of crude oil with high

to the crude oil. Id. However, as discussed, Hart (in the background) discloses
that Reynolds ’463 teaches adding the acid in an aqueous solution as claimed.
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amine concentrations through the use of the Nguyen ’943 patent.” Weers Decl. 7.
Dr. Weers stated that that product was “very commercially successful” and would
not have been possible without the Nguyen ’943 patent as evidenced by the fact
that no other competitor has been able to achieve any significant market share
since the Nguyen ’943 patent issued.” Id.

Legal principles
“A nexus between commercial success and the claimed features is required.
However, if the marketed product embodies the claimed features, and is
coextensive with them, then a nexus is presumed and the burden shifts to the party
asserting obviousness to present evidence to rebut the presumed nexus Brown &
Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir.
2000) (internal citations omitted). “[T]he asserted commercial success of the
product must be due to the merits of the claimed invention beyond what was
readily available in the prior art.” J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106
F.3d 1563, 1571 (Fed. Cir. 1997); see also Tokai Corp. v. Easton Enters., Inc., 632
F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in
the prior art, no nexus exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial success was
known in the prior art, the success is not pertinent.”) “For objective evidence to be
accorded substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995); see also Wyers v. Master Lock Co., 616 F.3d 1231,
1246 (Fed. Cir. 2010).

Discussion
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In this case, Dr. Weers testified that Baker Petrolite, the patent owner, has “a
95+% market share in the United States, and worldwide, for both process of crude
oil with high calcium concentrations and the processing of crude oil with high
amine concentrations through the use of Nguyen ‘943 patent.” Weers Decl. ¶ 7.
Accompanying Dr. Weers’s declaration is a brochure titled “EXCALIBUR
Contaminant Removal Technology.” Exhibit 3. The brochure identifies
contaminants such as “calcium naphthenates, inorganic iron, caustics, and other
alkaline materials.” Exhibit 3, p. 64. The EXCALIBUR technology is said to
“involve[ ] injection of a water soluble complexing agent into the desalter wash
water to increase the solubility of contaminants in the aqueous phase.” Id. From
the ’943 patent, we understand the complexing agent to be a hydroxyacid. Patent
Owner acknowledged this in the oral hearing. Hearing Transcript 23: 22-23. The
brochure describes the efficiencies of the EXCALIBUR technology in removing
calcium and iron from crude oils. Id. at 65.
The brochure expressly characterizes the role of the “complexing agent” in
the EXCALIBUR technology as removing the contaminants from the oil.
However, this activity was known in the prior art.
As explained above, Hickok teaches that “deleterious constituents were
simultaneously removed by the lactic acid, which has an affinity for ions of copper
or iron.” Hickok, col. 5, ll. 4-7. Since the lactic acid is described as having “an
affinity” for copper or iron, the skilled worker would have reasonably understood
from this disclosure that lactic acid binds to the copper or iron, and thus forms a
complex with it. The “spent acid” is removed (see Hickok’s figure); the copper
and iron are removed (Hickok, col. 2, ll. 48-50); hence, the copper and iron are
clearly removed in the aqueous “spent acid” after having complexed with the lactic
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acid. Thus, it is appears from the discussion in the brochure describing the
EXCALIBUR technology that the mechanism responsible for EXCALIBUR’s
efficacy in removing iron is described in Hickok.
Reynolds ’463 has similar teachings. Reynolds ’463 expressly teaches that
its acids, which are the same as those which are claimed, form complexes with iron
and are effective for removing organo-calcium compositions. Reynolds’463, col.
2, ll. 49-50; col. 3, 5-25. Reynolds’463 also teaches the complexes are soluble in
the aqueous phase of the mixture.
The iron is readily-bound or chelated to the acid ion. This
iron/hydroxo-carboxylate complex is ionic and is therefore soluble in
the aqueous phase of the mixture. The two phases, the aqueous and
the crude or hydrocarbonaceous phase, are separated or permitted to
separate, and the aqueous solution is removed. The aqueous solution
containing the iron contaminant is removed, resulting in an essentially
iron-free hydrocarbon feed
Reynolds’463, col. 2, ll. 49-57.
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. RAN 47. As the Examiner found, the
addition of a hydroxyacid to a conventional desalting process constitutes the
predictable use of a prior art element according to its established functions. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 413 (2007).
In addition to this, Dr. Weers did not disclose the amount of acid used, the
pH, and other conditions
9
utilized in EXCALIBUR. Nor did Dr. Weers state that
EXCALIBUR does not involve any additional steps which are not recited in the

9
Patent Owner’s own arguments directed to the Examiner’s prima facie case of
obviousness discussed supra indicates a significant effect of process conditions on
the claimed desalting process.
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22

claims on appeal. Consequently, it cannot be determined if it is the acid alone
responsible for the asserted success. In other words, Patent Owner, the proponent
of commercial success, fails to carry its burden of establishing a nexus between the
evidence and the merits of the claimed invention.

SUMMARY
Based on the totality of the evidence, we conclude that it would have been
obvious to one of ordinary skill in the art at the time of the invention to have made
the subject matter of claim 1 in view of Reynolds and Hart (rejection 1), and Patent
Owners Admissions and Hickok (rejection 3). Claims 5, 6, 17, 26, and 30-32 were
not argued separately and thus fall with claim1 for the reasons given by the
Examiner.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (d) of this section, and for submitting comments under
paragraph (c) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties’ rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
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23

under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.

AFFIRMED

ack
CC:

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