Ex Parte Mayeur et al

Patent Trial and Appeal Board

Jul 26, 2016

12373158 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/373, 158 0110912009
23373 7590 07/28/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Vincent Mayeur
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Qlll677 8503
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT MA YEUR, CESAR VERGEL, and LAURENT MARIETTE
Appeal2014-005113
Application 12/373, 158
Technology Center 1700
Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005113
Application 12/373, 158
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a process for the catalytic hydrotreating of a diesel
fuel feed having incorporated therein vegetable oils and/or animal fats up to a level
of around 30% by weight. Specification filed Sep. 9, 2009 ("Spec."), 3:5-9. At
the time of the invention, processes for refining biomass were known in the art. Id.
at 2:27-28. According to the Specification, a drawback of known processes was
that the strong exothermicity of the involved reactions necessitated recirculation of
up to 80% of the feed from the hydrotreating reactor outlet to its inlet, requiring
substantial modifications to conventional diesel fuel hydrotreatment units. See id.
at 2:30-35. Appellants are said to have "developed a hydrotreating process that
makes it possible to incorporate a maximum of biomass in a diesel fuel feed
without substantial modification of the conventional hydrotreating unit and ...
without a device for recycling the liquid effluent at the top of the reactor." Id. at
2:36-3:3. Claim 1, the sole independent claim on appeal, is reproduced below
(emphasis and indentations added):
1. An industrial process for the catalytic hydrotreating of a feed
of oil origin, of diesel fuel type, in at least one fixed-bed hydrotreating
reactor wherein the fixed-bed hydrotreating reactor operates in
adiabatic mode, for manufacturing diesel fuel, comprising
incorporating into said feed vegetable oils and/or animal fats
up to a level of around 30% by weight, the mixture of said feed and
vegetable oils and/or animal fats being introduced into the reactor
operating in a single pass, without recycling liquid effluent at the top
of the reactor, and
1 Appellants identify the real party in interest as Total Raffinage Marketing.
Appeal Brief filed Sep. 30, 2013 ("Br."), 2.
2 Final Office Action mailed Jan. 31, 2013 ("Final Act.").
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Application 12/373, 158
recovering all liquid effluents, said liquid effluents being the
diesel fuel.
Claims 1-18 stand rejected as follows:
1. Claim 1 is rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. Final Act. 2-3.
2. Claims 1-9, 12, and 15-18 are rejected under 35 U.S.C. §103(a) as
unpatentable over Craig (US 4,992,605, iss. Feb. 12, 1991) in view ofMiyauchi
(US 2006/0060509 Al, pub. Mar. 23, 2006). Final Act. 4---6.
3. Claims 10 and 13 are rejected under 35 U.SC. §103(a) as unpatentable
over Craig in view of Miyauchi and Masoomain (US 5,268, 104, iss. Dec. 7, 1993).
Final Act. 6-7.
4. Claims 11and14 are rejected under 35 U.SC. §103(a) as unpatentable
over Craig in view of Miyauchi, Masoomain, and Wildmoser (US 3,926,591, iss.
Dec. 16, 1975). Final Act. 8-9.
Rejection of claim 1 under 35 U.S. C. §112, first paragraph
The Examiner contends there is no clear support in the Specification for the
claim language "recovering all liquid effluents, said liquid effluents being the
diesel fuel" (claim 1 ). Final Act. 2-3. The Examiner notes the Specification
describes separating water from the diesel fuel product. Ans. 11. The Examiner
maintains, therefore, that water is necessarily a liquid effluent that is co-produced
in the reactor, and there is no support for a claim recitation that limits the liquid
effluents to diesel fuel. Id.
"[C]laim construction is inherent in any written description
analysis." Atlantic Research Marketing Systems, Inc. v. Troy, 659 F.3d 1345, 1354
(Fed. Cir. 2011) (quoting In re Katz Interactive Call Processing Patent Litig., 639
F.3d 1303, 1319 (Fed. Cir. 2011)). In considering whether the claims comply with
the written description requirement of 35 U.S.C. § 112, first paragraph, the
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Application 12/373, 158
Examiner must first determine the scope of the claims. Ariad Pharms., Inc. v. Eli
Lilly and Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010). During examination, claim
terms are given their broadest reasonable construction consistent with the
Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007).
The Examiner's rejection is based on an interpretation of the term "being" as
closed claim language, i.e., synonymous with "consisting of." Non-conventional
transitional phrases (i.e., other than "comprising," "consisting essentially of," and
"consisting") are interpreted in light of the specification to determine whether open
or closed claim language is intended. See, e.g., AFG Industries, Inc. v. Cardinal
JG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (interpreting "composed of' in same
manner as "consisting essentially of' based on Specification and other evidence);
Crystal Semiconductor Corp. v. Tri Tech Microelectronics Int 'l, Inc., 246 F .3d
1336, 1348 (Fed. Cir. 2001) (noting that the term "having" in transitional phrase
"does not create a presumption that the body of the claim is open"); Lampi Corp. v.
American Power Prods., Inc., 228 F.3d 1365, 1376 (Fed. Cir. 2000) (interpreting
"having" as open terminology, allowing the inclusion of other components in
addition to those recited).
Claim 13 depends indirectly from claim 1 and recites a separator for
separating "the liquid and vapour phases of the effluent exiting the reactor." The
Specification similarly describes a line that "recovers the effluent at the outlet of
the reactor 2 and conveys it to a separation stage 5." Spec. 7:29-30. The
Specification describes separating the mixture exiting the reactor to obtain an acid
gas G rich in H2S, light products L that result from the decomposition of impurities
in the feed, and a hydrorefined product H (i.e., the desired diesel fuel end-product)
having the same volatility as the feed but improved characteristics. See id. at 8: 1-
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Application 12/373, 158
14. The separation stage is described as comprising: a first, high-pressure,
separator tank for separating a hydrogen-rich gas from the effluent; a second, low-
pressure, separator tank for "separat[ing] the liquid and vapour phases obtained by
pressure drop of the liquid coming from the high-pressure tank;" and a steam
stripper for removing light hydrocarbons L and residual H2S from the treated feed.
Id. at 8: 17-28 (emphasis added). The Specification discloses that hydrorefined
product H is decanted from the bottom of the stripper and a vacuum drier is used to
remove water dissolved by the hot, hydrorefined product H in the stripper. Id. at
8:29-30.
Based on our review of the Specification, the only specific references to
liquids obtained from the mixture exiting the reactor are to the liquid separated
from hydrogen-rich gas in a first separator tank, the liquid phase (and vapor phase)
formed from that liquid in a second separator tank, and the hydrorefined product H
obtained in a decanter. The only specific reference to the "recovery" of an effluent
is to the mixture exiting the outlet of the reactor, prior to conveyance to the
separation stage. One of ordinary skill in the art would understand, however, that
the desired hydrorefined product H also would be "recovered" in a final stage of
the hydrotreating process. It is unclear whether the effluent, upon exiting the
reactor, necessarily includes both liquid and vapor phases, and, if both phases are
present, which components are present in the liquid phase. Compare id. at 8:3--4
( describing the feed to the reactor as "in the vapour state if it is a light cut, or as a
liquid-vapour mixture if it is a heavy cut") with id. at 6: 13-15 (describing the
invention as also relating to "a separator that separates the liquid and vapour
phases of the effluent exiting the reactor"). The feed entering the second separator
tank, however, described as the liquid phase from the first separator tank, contains
components other than the desired hydrorefined product H, since the second
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Application 12/373, 158
separator tank separates H2, L, and H2S from the hydrorefined product H. Id. at
8:21-25.
Based on the above-cited disclosure in the Specification, we determine the
broadest reasonable interpretation of the claim 1 step of "recovering all liquid
effluents, said liquid effluents being the diesel fuel," is not limited to the recovery
of the desired diesel fuel end-product, but reads on recovery of liquid effluents
exiting a hydrotreating reactor as well as liquid effluents containing the desired
diesel fuel product recovered at any stage during or after separation of components
of the effluent exiting the hydrotreating reactor. Because it is clear from the
Specification that liquid effluent recovered in at least one separation stage (i.e., the
second separator tank) includes components other than the desired diesel fuel
product, we interpret the term "being" as open terminology. See id. at 8:21-25
(indicating that the liquid exiting the first separator tank contains light
hydrocarbons and the desired diesel fuel product). In other words, the broadest
reasonable interpretation of the claim 1 recitation "recovering all liquid effluents,
said liquid effluents being the diesel fuel" encompasses recovery of liquid effluents
at any point in the process subsequent to the reaction stage and, therefore, liquid
effluents containing components other than the desired diesel fuel product. We
note that our interpretation of the claim 1 "recovering" step as reading on the
recovery of intermediate liquid effluents that occurs prior to the final step of
recovering the desired, diesel fuel product is consistent with the use of the term
"comprising" in the claim preamble, indicating claim 1 allows for additional
process steps, e.g., subsequent separation steps and a subsequent step of recovering
the desired, diesel fuel product.
The Examiner's determination that the Specification does not support the
claim 1 recovering step is based on a finding that both water and the desired diesel
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Application 12/373, 158
fuel product are liquid effluent that are co-produced in the reactor and an
interpretation of the "liquid effluents" obtained in the "recovering" step as limited
to diesel fuel. Based on our construction of the term "being" as open to including
components other than the diesel fuel product in the liquid effluent, we determine
the Examiner reversibly erred in rejecting claim 1 under 35 U.S.C. § 112, first
paragraph. We, therefore, do not sustain this rejection.
Rejections of claims 1-18 under 35 U.S.C. §103(a)
The Examiner finds Craig discloses the invention as claimed with the
exception of an explicit teaching of incorporating the vegetable oils into the feed
"up to a level of around 30% by weight," and operating the hydrotreating reactor
"in adiabatic mode." Final Act. 4. The Examiner finds that although Craig
discloses that vegetable oils may be incorporated into the feed at a level of 50%,
one of ordinary skill in the art would have understood from Craig's comparison
data that using lesser amounts of vegetable oil, i.e., in Appellants' claimed range,
is preferred because it would result in products with increased yield of diesel
boiling range material and decreased yield of gases. Id. at 4--5. The Examiner
further finds one of ordinary skill in the art would have been motivated to operate
Craig's reactor in adiabatic mode based on Miyauchi's teaching that
hydroprocessing reactors generally operate in adiabatic fashion. Id. at 5 (citing
Miyauchi i-f 25).
Appellants do not identify clearly any arguments made in support of
patentability of any particular claim or claim grouping, but appear to rely on
limitations found in independent claim 1. See App. Br. 5-13. We note, however,
that on page 6 of the Appeal Brief, Appellants argue Craig's process cannot be
used to manufacture diesel fuel from palm oil, a claim limitation recited in claim
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Application 12/373, 158
15. Accordingly, out of an abundance of caution, we have considered this
argument as a separate argument in support of patentability of claim 15.
Having considered the arguments advanced by both the Examiner and
Appellants, we find a preponderance of the evidence, as set forth in the Examiner's
Final Action and Answer, favors the Examiner's conclusion of obviousness.
Appellants' arguments have been addressed fully in the Examiner's Response to
Argument section of the Answer, and we agree with the Examiner's reasons for
finding Appellants' arguments unpersuasive of error in the Examiner's conclusion
of obviousness. See Ans. 10-16; id. at 13 (addressing the argument relating to the
claim 15 limitation). As noted by the Examiner, Appellants rely on features that
are not recited in the claims (see, e.g., Ans. 11-12) and on unsupported attorney
argument (see, e.g., id. at 12-13), and fail to show error in the Examiner's findings
with respect to the level of skill of the ordinary artisan at the time of Appellants'
invention (see, e.g., id. at 12-16). Accordingly, we sustain the Examiner's
rejections of claims 1-18 under 35 U.S.C. § 103(a) based on the fact finding and
reasoning set forth in the Examiner's Final Action and the Examiner's Answer.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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