Ex Parte Bhan et al

Board of Patent Appeals and Interferences

May 29, 2012

11013553 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/013,553 12/16/2004 Opinder Kishan Bhan TH2802 (US) 4539
23632 7590 05/29/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
05/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Shell Oil Company
____________

Appeal 2010-008150
Application 11/013,553
Technology Center 1700
____________

Before RICHARD E. SCHAFER, CHUNG K. PAK and
TERRY J. OWENS, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Shell Oil Company (Applicant) appeals from an Examiner’s decision
rejecting claims 1-7, 10-26,29 and 30 under 35 U.S.C. § 103(a).1 35 U.S.C. §§
6(b) and 134(a). Because we do not see error in the Examiner’s decision that the
subject matter of those claims would have been obvious, we affirm.

1 In the Answer, the Examiner withdrew the rejection of Claims 31 and 33
indicating that the subject matter of those claims was considered patentable and
that the claims would be allowed if rewritten in independent form. Ans. 2-3. The
Examiner’s decision rejecting those claims is not before us.
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The Claimed Subject Matter
Applicant claims a catalytic process for upgrading a crude hydrocarbon oil
feed. The process itself has but two required steps: (1) contacting the feed with the
catalyst and (2) controlling the feed-catalyst contact conditions. The catalyst used
must include Tungsten, Molybdenum or Chromium (metals from Column 6 of the
Periodic Table) or compounds of those metals. The median pore size of the
catalyst must be 90-180 Å. Some of the characteristics of both the feed and the
upgraded oil are specified. The feed must have a certain minimum Total Acid
Number (TAN) and sulfur content. The resulting upgraded oil must be liquid at
room temperature and pressure, have a TAN of no more than 10% of the feed, and
a sulfur content of about 70% - 130% of the feed. The claims also specify that
certain conventional ASTM tests be used to determine the catalyst pore size, TAN
and sulfur content.
We reproduce representative Claim 1 below:
1. A method of producing a crude product, comprising:
contacting a crude feed with one or more catalysts to
produce a total product that includes the crude product, wherein
the crude product is a liquid mixture at 25ºC and 0.101 MPa,
the crude feed having a total acid number (TAN) of at least 0.3,
the crude feed having a sulfur content of at least 0.0001 grams
of sulfur per gram of crude feed, and at least one of the catalysts
comprising one or more metals from Column 6 of the Periodic
Table, one or more compounds of one or more metals from
Column 6 of the Periodic Table, or mixtures thereof, and has a
pore size distribution with a median pore diameter in a range
from 90Å to 180 Å as determined by ASTM Method D4284;
and
controlling contacting conditions such that the crude
product has a TAN of at most 10% of the TAN of the crude
feed, and the crude product has a sulfur content of about 70% to
about 130% of the sulfur content of the crude feed, wherein
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TAN is as determined by ASTM Method D664, and sulfur
content is as determined by ASTM Method D4294.
Brief, 11 (Claims Appendix).
The Rejections
An Examiner rejected claims 1-3, 5-7, 10-18, and 23-26, 29 and30 under
35 U.S.C. §103(a) as unpatentable over the combined teachings of Sudhakar2 and
Simpson.3 Claims 4 and 19-22 were rejected under § 103(a) over the same two
references combined with Boon.4 Ans. 7.
Sudhakar
Sudhakar describes a catalytic process for upgrading a crude hydrocarbon oil
feed. The feed is contacted with a catalyst that includes metals of Group VIB and
Group VIII of the Periodic Table. Sudhakar, 1: 49-53. Group VIB is the metals
Tungsten, Molybdenum and Chromium referred to by Applicants as the metals of
Column 6 of the Periodic Table. As shown in Table I, the feed oil had a TAN of
greater that 0.3 (describing a TAN of 4.20) and a sulfur content of greater than
0.0001gram sulfur per gram (describing a 1% sulfur which equal to .01 gram of
sulfur per gram of oil). The contact conditions are controlled to reduce the TAN
and sulfur. Sudhakar, 1:56-63. Sudhakar’s examples show the effects of changing
contact conditions such as feed rate, reaction temperature, sulfiding agent and
hydrogen flow on the amounts of TAN and sulfur reduction. Sudhakar Examples
1-4 and Comparative Examples A and B. For example, in Examples 3 and 4
raising the reaction temperature from 423° to 434ºC and the hydrogen flow rate
from 450 to 600 cc/min resulted in an increase in TAN and sulfur reduction from
88 to 100% and 15 to 20%, respectively. In this regard, we note that the contact

2 US Patent 5,928,501, patented Jul. 27, 1999
3 US Patent 5,334,307, patented Aug. 2, 1994
4 US Patent 5,744,025, patented Apr. 28, 1998
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conditions of Sudhakar’s Example 4 achieves a TAN of about 0% and sulfur
content of 80% of their values in the feed. Both values are within those required
by Applicant’s claims.
Differences between the claimed subject matter and Sudhakar
There are two differences between Sudhakar’s disclosure and the process
claimed by Applicant. Sudhakar (1) does not tell us the median pore size of the
catalysts described therein and (2) does not identify the tests used to measure pore
size, TAN and sulfur content. Applicant, however, does not assert the specific
tests as a basis for patentably distinguishing its process from Sudhakar’s. It is not
necessary, therefore, for us to further discuss the ASTM tests.
Simpson
Simpson relates to improved catalysts for use in processing hydrocarbon oil
feedstock. Simpson, 2:30-32. Crude oil is listed among the typical oils
contemplated for processing. Simpson, 9:52-55. A preferred catalyst uses the
combination of Group VIB and Group VIII metals. Simpson, 7:51-58. Simpson’s
catalysts are said to have “a narrow pore size distribution containing a median pore
diameter greater than 120 angstroms.” Simpson, 2:34-38. The most preferred
median pore diameter is described as 120-140 Å. Simpson, 8:10-14. Simpson
describes an exemplary “Catalyst A” that includes Group VIB and Group VII
metals. Simpson, 12:6-12. It is said to have a median pore diameter of 137 Å.
Simpson, col. 13, Table IV. Simpson says that the catalysts may be used in any of
the methods for processing hydrocarbon oils “wherein catalytic composites
containing Group VIB and/or Group VIII metals are known to be catalytically
effective , . . .” Simpson, 9:44-47. The catalysts are said to be
a surprisingly effective composition for catalyzing reactions for
removing contaminant compounds in hydrocarbon-containing
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feedstocks, for example, the simultaneous hydroconversion of
complex organosulfur, organonitrogen and organometallic
contaminant compounds.
Simpson, 2:38-44. The catalysts are also said to be effective in processes such as
for hydrogenation, dehydrogenation, hydrodesulfurization, oxidation,
hydrodenitrogenation, hydrodemetallation, hydroisomerization, hydrocracking,
mild hydrocracking, hydroreforming, and the like. Simpson, 9:44-52.
Analysis
Claim 1
The Examiner concluded that it would have been obvious to substitute
Simpson’s catalyst for the catalyst described Sudhakar. Ans. 5.
The record supports the Examiner’s conclusion. Sudhakar teaches a process
using catalysts that include a combination of Group VIB and VIII elements.
Simpson teaches improved catalysts that are also a combination of Group VIB and
Group VIII elements. Simpson’s teaching that the described catalysts are
“surprisingly effective” in catalyzing the removal of contaminates including sulfur
(Simpson, 2:38-44) provides ample motivation to substitute Simpson’s catalysts
for Sudhakar’s. Simpson’s additional teaching that the catalysts are said to be
useful in in processes where “catalytic composites containing Group VIB and/or
Group VIII metals are known to be catalytically effective” (Simpson, 9:44-47)
provides a reasonable expectation of success that Simpson’s catalysts would be
effective in upgrading oils. It would have been prima facie obvious to use
Simpson’s catalysts in Sudhakar’s process. As demonstrated by Sudhakar’s
examples, the person of ordinary skill in the art is aware that control of the
contacting conditions, such as feed rate, reaction temperature, sulfiding agent and
hydrogen flow rates effects both the amount of TAN reduction and sulfur
reduction. Sudhakar, Examples 1-4 and Comparative Examples A and B.
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Controlling the process conditions to obtain desired TAN and sulfur reductions is
within the skill of the art and does not recite an unobvious difference over the prior
art.
Applicants argue that one having ordinary skill in the art would not have
used Simpson’s catalyst because it would not have been expected that Simpson’s
catalyst would lower TAN. Br. 7. For support, Applicants rely on (1) Simpson’s
failure to mention TAN reduction, (2) the teachings of Trachte (U.S. Patent
5,897,769), and (3) on the alleged general knowledge of the state of the art. Also
Applicant says that according to the general knowledge in the art the preferred
catalyst is a small pore diameter catalyst having an average pore size of 16-50 Å
and most preferably 30Å.
We do not find these arguments convincing.
Simpson, while not mentioning TAN, specifically teaches that the described
catalysts may be used in any process where “catalytic composites containing
Group VIB and/or Group VIII metals are known to be catalytically effective . . . .”
Simpson, 9:44-47. Sudhakar describes such a process. In view of this teaching it
would have been at least obvious to try Simpson’s catalyst in the Sudhakar process
and expect a reduction in TAN.
According to Applicant, Trachte teaches that “TAN reduction is typically
effected by treating a crude oil with a catalyst having pore diameters of less than
85Å . . . .” Br, 7. We fail to see where Trachte teaches that pore sizes less that 85
Å are “typically” used to lower the TAN. The Trachte patent describes its
contribution to the field as selectively removing low molecular weight naphthenic
acids to lower corrosion by employing a pore diameter of less than 85Å:
[T]here is disclosed a process for selectively removing lower
molecular weight naphthenic acids from an acidic crude
containing a mixture of naphthenic acids which comprises
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contacting the acidic crude with a hydrotreating catalyst having
a pore diameter less than about 85 Å at a temperature of from
about 200º to about 370º C whereby naphthenic acids having a
molecular weight below about 450 are preferentially removed
from the crude oil.
Trachte, 2:1-9. We have not been directed to, nor could we locate, where Trachte
teaches that catalyst pore sizes less than 85 Å are typically used in catalytic
processes to reduce TAN or that median pore sizes larger than 85 Å are not
effective in reducing TAN.
As to Applicant’s assertion that the general knowledge in the art indicates
that the preferred catalyst for TAN reduction has an average pore diameter of 16-
50 Å, we have not been directed to evidence establishing that there is a general
preference in the art as to the median pore size.
Applicant argues that one of ordinary skill would use the Simpson catalyst to
desulfurize the crude oil while the claimed invention is said to be directed to
maintaining the sulfur content of the oil. Br. 7-8. Applicants’ claims, however, do
not preclude sulfur reduction. Claim 1 allows reduction of sulfur to about 70% of
that of the crude feed. Br. 11. Additionally, as demonstrated by Sudhakar’s
examples, those working in the art are aware that modifying the catalyst contact
conditions is effective in modulating both sulfur and TAN reductions. Sudhakar,
6:7 – 9:63, Examples 1-4 and Comparative Examples A and B. Thus, modifying
the contact conditions in order to get a desired sulfur content and TAN is within
the skill of the art. Control of the contact conditions to achieve a sulfur content of
70-130% and TAN of less than 10% of the crude feed would not have been
unobvious.
We affirm the Examiner’s decision to reject Claim 1.

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Claims 2-3, 5-7, 10-18, 23-26, and 29
Applicants have not provided separate arguments directed to the subject
matter of Claims 2-3, 5-7, 10-18, 23-26, and 29. We choose Claim 1 as
representative of the subject matter of these claims (37 C.F.R. § 41.67(c)(vii)) and
affirm the Examiner’s rejection of those claims for the reasons stated for affirming
Claim 1.
Claims 4 and 19-22
These claims depend from Claim 1. The Examiner rejected Claims 4 and
19-22 over the combined teachings of Sudhakar, Simpson, and Boon. Applicant
does not challenge the Examiner’s reliance on Boon, but instead argues that the
claims are patentable because Claim 1 is patentable. Br. 10. We affirm the
Examiner’s decision to reject Claims 4 and 19 -22 for the reasons stated with
respect to Claim 1. 37 C.F.R. § 41.67(c)(vii).
DECISION
The Examiner’s decision rejecting the subject matter of Claims 1-7,
10-26,29 and 30 under 35 U.S.C. § 103(a) is affirmed.
AFFIRMED

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