Ex Parte Adams

Board of Patent Appeals and Interferences

Aug 19, 2009

10797223 (B.P.A.I. Aug. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NICHOLAS JAMES ADAMS
____________________

Appeal 2009-002851
Application 10/797,223
U.S. Patent Publication 2004-0206666
Technology Center 1700
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Decided: August 19, 2009
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Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and JAMESON LEE and SALLY GARDNER LANE, Administrative Patent
Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the case 1
Shell Oil Company ("Shell"), the real party in interest, seeks review 2
under 35 U.S.C. § 134(a) of a final rejection (mailed 16 July 2007). 3
Claims 1-9 are in the application. 4

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The Examiner relies on the following prior art: 1
Van Ballegoy WO 00/29511 25 May 2000
Chen Molecular Transport
and Reaction in Zeolites
(John Wiley and Sons),
page 11
1994
2
The reader should know that "et al" is not used in this opinion. 3
Van Ballegoy and Chen are prior art under 35 U.S.C. § 102(b). We 4
note that U.S. Patent 6,576,120 appears to correspond to Van Ballegoy's 5
WO 00/29511. 6
We have jurisdiction under 35 U.S.C. § 134(a). 7
B. Claims on appeal 8
Claims 1-9 are on appeal. 9
Claim 1 is an independent claim. 10
Claims 2-9 depend directly or indirectly from claim 1. 11
Shell has not separately argued the patentability of dependent claims 12
2-9 apart from the patentability of claim 1. 13
Claims 2-9, therefore, stand or fall with claim 1. 14
Claim 1 reads [bracketed matter and some indentation added]: 15
Claim 1 16
A single-step process for converting a petroleum derived wax to 17
provide a high yield of gas oil, wherein said single-step process 18
comprises: 19
contacting, under catalytic dewaxing conditions, said petroleum 20
derived wax with a catalyst composition comprising: 21

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[1] a platinum component, wherein the platinum is present in 1
said catalyst composition in the range of from 0.1 to 5.0% by weight, 2
[2] a silica binder and 3
[3] zeolite crystallites having pores consisting of 12 oxygen 4
atoms, 5
wherein the zeolite crystallites have a constraint index (CI) 6
larger than 1 and 7
wherein the weight ratio of said zeolite crystallites to said silica 8
binder is in the range of from 5:95 to 95:5; and 9
yielding a product effluent comprising 10
[a] a base oil fraction and 11
[b] a gas oil fraction 12
wherein said gas oil fraction is larger than the fraction of said 13
product effluent boiling below said gas oil fraction. 14
C. Discussion 15
The Examiner's Answer lays out the Examiner's position in rather 16
clear terms. 17
Upon consideration of Shell's arguments in its Appeal Brief and Reply 18
Brief, we find no basis for questioning the accuracy of the Examiner's 19
findings; they are more than supported by Van Ballegoy. 20
Likewise, the Examiner has addressed Shell's arguments. 21
Upon consideration of Shell's arguments and the Examiner's findings 22
and conclusions with respect to those arguments, Shell has not convinced us 23
that the Examiner has erred in rejecting claim 1 under § 103. 24

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We will affirm for the reasons given by the Examiner, adding the 1
following remarks to emphasize certain points involved in the appeal. 2
The Examiner found that Van Ballegoy does not explicitly describe 3
the fact that MTW has pore sizes consisting of 12 oxygen atoms. 4
Examiner's Answer, page 4. The Examiner turned to Chen to show that, as 5
of 1994 (Van Ballegoy having been filed as early as 1998 in the EPO), 6
MTW was known as a ZSM-12 zeolite having channel size of 12—meaning 7
12 oxygen atoms. It is not clear that the Examiner had to rely on Chen. 8
Why? Van Ballegoy says that MTW-type topology includes ZSM-12, as for 9
example described in U.S. Patent 3,832,449 (Van Ballegoy page 7:28-30). 10
Shell says essentially the same thing—MTW type zeolites include ZSM-12 11
as described in U.S. Patent 3,822,499 (Specification, page 6:2-4). We feel 12
comfortable finding, as did the Examiner, that the Van Ballegoy ZSM-12 13
has the 12 oxygen atom requirement of claim 1. 14
Shell argues that Van Ballegoy does not describe a process which 15
produces "gas oil." Appeal Brief, pages 4-6. Given that Shell is in the 16
refining business, we cannot help but feel that Shell may be playing ostrich 17
in this case. 18
We cannot imagine that Shell would deny that one skilled in the art 19
knows that when a lubricating base oil is refined in a dewaxing process, 20
various hydrocarbon "fractions" result. Nor can we imagine that Shell 21
would deny that one skilled in the art knows that the fractions obtained, and 22
in what amounts, is a function of various parameters including the catalyst 23
used. One skilled in the art is taught by Van Ballegoy the following 24
(page 17:6-20): 25

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The effluent from the catalytic dewaxing process . . . is 1
separated into a gaseous fraction and a liquid fraction. Such 2
separation or fractionation can be attained by conventional 3
methods, such as by distillation under atmospheric or reduced 4
pressure. Of these, distillation under reduced pressure . . . is 5
most suitably applied. The cutpoint(s) of the distillate 6
fraction(s) is/are selected such that each product distillate 7
recovered has the desired properties for its envisaged 8
application. For lubricating base oils, the cutpoint will 9
normally be at least 280 ºC and will normally not exceed 400 10
ºC, the exact cutpoint being determined by the desired product 11
properties, such as volatility, viscosity, viscosity index and pour 12
point. 13
Example 2a of Van Ballegoy states (id. 19:7-14): 14
Example 1 was repeated except that a catalyst was used 15
consisted of 90 wt % silica binder, 10 wt % ZSM-12 powder 16
and a platinum loading of 0.7 wt %. The crystal size of the 17
ZSM-12 crystallites was 1 µm and the extrudate was 18
dealuminated as in Example 1. The properties of the obtained 19
lubricating base oil product and the yield of catalytic dewaxing 20
experiment are given in Table II. 21
Table II (Product Characteristics) (id. 20) reveals that: 22
(1) the catalyst had ZSM-12 size = 1-2 µm. 23
(2) the reaction temperature was 358 ºC. 24
(3) Yield was 91% wt. 25

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(4) Gas makeup was 2.9% wt. 1
(5) Pour point was -16 ºC. 2
(6) Viscosity Index (VI) was 108. 3
What is not set out in Table II, or otherwise discussed in Example 2a, 4
is what other products were obtained. 5
In presenting its appeal, Shell does not deny that the Van Ballegoy 6
process may result in production of some gas oil. Rather, Shell simply says 7
Van Ballegoy does not explicitly describe obtaining any gas oil. But, if Shell 8
obtains gas oil using ZSM-12, then one skilled in the art would reasonably 9
expect that Van Ballegoy also would obtain gas oil. The amount of gas oil 10
cannot be determined on this record. Likewise, not capable of determination 11
is whether the gas oil fraction is larger or smaller than the fraction of the 12
effluent boiling below the gas oil fraction. By boiling "below," we think 13
Shell means boils at a lower temperature than the boiling point of gas oil. 14
For this reason, reference is made in the record to "lighter components" (e.g. 15
Examiner's Answer, page 8:1). Lighter components have a lower boiling 16
point than heavier components. 17
The Examiner's conclusion is that one skilled in the art would know 18
that Van Ballegoy produces a product comprising (1) lubricating base oil, 19
(2) gas oil and (3) other materials. Examiner's Answer, page 7. We agree 20
with the Examiner. However, the Examiner—or the USPTO for that 21
matter—has no means by which to perform experiments and make 22
measurements to confirm or deny whether more gas oil is produced than 23
"lighter components." As we noted earlier, Shell cannot play ostrich to the 24
fact that some gas oil is more than likely produced by the Van Ballegoy 25

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process when a ZSM-12 catalyst is used. If Shell seeks to further prosecute 1
the application through an RCE or a continuation, Shell may wish to 2
consider undertaking some experimental work and report any results of that 3
experimental work to the Examiner. 4
Shell also maintains that ZSM-12 catalyst is only one of many 5
catalysts described by Van Ballegoy. The fact is that Van Ballegoy's 6
description of ZSM-12 (e.g., Van Ballegoy Example 2a) puts its use for 7
making lubricating oil (as well as other fractions) in the public domain. 8
Unexplained, and unestablished, on this record is why Shell is entitled to 9
remove the use of ZSM-12 from the public domain. 10
We have considered Shell's remaining arguments and find none that 11
warrant reversal of the Examiner’s rejections. Cf. Hartman v. Nicholson, 12
483 F.3d 1311, 1315 (Fed. Cir. 2007). 13
D. Decision 14
Shell has not sustained its burden on appeal of showing that the 15
Examiner erred in rejecting the claims on appeal as being unpatentable under 16
§ 103 over the prior art. 17
On the record before us, Shell is not entitled to a patent containing 18
claims 1-9. 19

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Upon consideration of the appeal, and for the reasons given herein, 1
it is 2
ORDERED that the decision of the Examiner rejecting 3
claims 1-9 over the prior art is affirmed. 4
FURTHER ORDERED that no time period for taking any 5
subsequent action in connection with this appeal may be extended under 6
37 C.F.R. § 1.136(a)(1)(iv) (2008). 7

AFFIRMED

KMF

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