Ex Parte MestersDownload PDFPatent Trial and Appeal BoardSep 20, 201311399162 (P.T.A.B. Sep. 20, 2013) Copy Citation 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. 11/399,162 04/06/2006 Carolus Matthias Mesters TS 1610 USA P 1245 23632 7590 09/20/2013 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER SINGH, PREM C ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 09/20/2013 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 ____________________ PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte Shell Oil Company (Inventor: Carolus Matthias Mesters) ____________________ Appeal 2012-007463 Application 11/399,162 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, TERRY J. OWENS, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. SCHAFER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007463 Application 11/399,162 2 Shell Oil Company (Applicant) appeals from an Examiner’s decision rejecting claims 1-15. 35 U.S.C. §§ 6(b) and 134(a). We affirm. The Claimed Subject Matter Applicant claims a process for reducing the “total acid number” or TAN of crude oil. The total acid number indicates the acidity of crude oil and therefore its corrosiveness during further processing. Naphtenic acid is the most significant of the acids present in the crude. The value of the TAN is the total number of milligrams of potassium hydroxide required to neutralize the acids in the crude. Thus, the higher the TAN, the more acidic and corrosive is the crude. Applicant’s process contacts the crude with a metal oxide catalyst in the presence of a hydrogen containing gas at 200-400º C and at “elevated pressure.” The catalyst must include an oxide of a metal from Columns 3 or 4 of the Periodic Table or a lanthanide oxide. The catalyst must also be essentially free of elements or compounds of Columns 5 to 10 of the periodic table. Applicant apparently excludes the Columns 5 to 10 elements to avoid reactions such hydrodesulphurization, hydrodenitrogenation and saturation of unsaturated hydrocarbons. Written Description, p. 2, ll. 5-15. Claim 1 is representative and reproduced below: 1. A process for reducing the total acid number (TAN) of a crude oil feedstock, wherein the feedstock is contacted, in the presence of a hydrogen-containing gas and at a temperature in the range of from 200 to 400°C and at elevated pressure, with a catalyst comprising an oxide of a metal of Column 3 or 4 of the Periodic Table of Elements or of a lanthanide, which catalyst is essentially free of Column 5 to 10 metals or compounds thereof, to obtain a product with a reduced total acid number. Appeal 2012-007463 Application 11/399,162 3 The Rejections The Examiner maintained two rejections in the Answer: 1. Claims 1-15 under 35 U.S.C. § 103(a) over Great Britain Patent 496,779 (GB 779) evidenced by Ngan;1 and 2. Claims 11-15 under 35 U.S.C. § 112, second paragraph, as indefinite. Analysis The obviousness rejection As an initial matter, we observe that Applicant does not present separate arguments specifically directed to the dependent claims. Therefore, the dependent claims will stand or fall with their parent independent Claim 1. 37 CFR § 41.37(c)(1)(vii). GB 779 teaches a method of removing naphthenic acids from oil, thus lowering the TAN. The method contacts crude vaporized by being heated to a temperature above 300ºC with a metal oxide catalyst. GB 779, p. 1, ll. 36-41. The oxide catalyst is said to promote the destruction of the carboxylic group or the conversion of the carboxylic group into a non-acidic group without the oil being substantially converted. GB 779, p. 1, ll. 73-77. The useful oxide catalysts are said to include, inter alia, titanium dioxide, zirconium oxide and cerium dioxide. GB 779, p. 1, ll. 42-70. The former two are Column 4 metal oxides and the latter is a lanthanide oxide. The reference also teaches that the vaporization of the crude may be facilitated by using steam or “other auxiliary gases.” GB 779, p. 2, ll. 40-43. GB 779 does not specify the other auxiliary gases. The Examiner relies on Ngan. Answer, 6-7. Ngan relates to treatment of crude oil to form olefins. Ngan 1 US Patent 6,632,351. Appeal 2012-007463 Application 11/399,162 4 1:7-11. As a first step in that process the crude oil is vaporized in a preheater. Ngan 2:38-45. In a preferred embodiment, a dilution gas is used in the preheater. Ngan 6:29-33. The dilution gas may be any gas that promotes evaporation of the crude. Ngan 6:37-41. Steam, as well as a variety of hydrogen-containing gases are said to be suitable: Examples of dilution gases are dilution steam (saturated steam at its dewpoint), methane, ethane, nitrogen, hydrogen, natural gas, dry gas, refinery off gases, and vaporized naphtha. Preferably, the dilution gas is dilution steam, a refinery off gas, vaporized naphtha, or mixtures thereof. Ngan 6:44-49. The person having ordinary skill in the art would have recognized that hydrogen and hydrogen-containing gases are alternatives to steam as auxiliary or dilution gases to assist vaporization of the crude. Ngan 6:44-49. It would therefore have been prima facie obvious to use a hydrogen-containing gas as the auxiliary gas in the process taught by GB 779. Applicant argues that an important feature of GB 779 process is the reduction of naphthenic acid without otherwise substantially changing the oil. Brief 7. Applicant relies on Speight2 as establishing that one having ordinary skill in the art would have recognized that the addition of hydrogen in the presence of a catalyst would substantially change non-acidic properties of the oil feedstock. Id. Applicant argues that the use of a hydrogen containing gas would substantially change the process by significantly modifying other non-acidic properties of the oil. According to Applicant this would make the GB 779 process unacceptable for 2 The Chemistry and Technology of Petroleum, 3rd ed., J. Speight, p. 509 (Hydrotreating) (1999). Appeal 2012-007463 Application 11/399,162 5 its intended purpose and there would, therefore, be no motivation to use hydrogen- containing gas as the auxiliary gas. Id. at 7-8. We are not convinced by Applicant’s argument. The relied upon portion of Speight relates to hydrotreating. Hydrotreating is said to be used to improve crude by converting olefins and aromatics in the crude to naphthenes. Hydrogenation is also said to improve crude by removing sulfur, nitrogen, and oxygen. Speight, 509. We do not think the fact that certain properties in addition to TAN might be changed by using hydrogen-containing gas would dissuade one skilled in the art from using such gases in the GB 779 process. The person of ordinary skill would have recognized that higher hydrogen content and lower heteroatom content are also beneficial improvements. One skilled in the art would have been be motivated to use a hydrogen-containing gas not only to vaporize the oil as taught by Ngan, but to get the known benefits due to hydrogenation. “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes . . . .” KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 420 (2007). Additionally, to the extent one having ordinary skill in the art would consider GB 779 as only teaching a method for reduction of TAN without affecting other properties, there would still be motivation to use a hydrogen-containing gas. Speight teaches that a “wide variety of metals are active hydrogenation catalysts; those of most interest are nickel, palladium, platinum, cobalt, iron, nickel- promoted copper, and copper chromite.” Speight, 509. One having ordinary skill in the art wishing to lower TAN and minimize hydrogenation effects would avoid using known hydrogenation catalyst metals, such as those identified by Speight, when reducing TAN. The Examiner’s decision rejecting Claims 1-15 under 35 U.S.C. § 103(a) is affirmed. Appeal 2012-007463 Application 11/399,162 6 The indefiniteness rejection We held that all of Applicant’s claims are unpatentable under 35 U.S.C. § 103(a) over the combined teachings of GB 779 and Ngan. That decision is dispositive of the appeal. It is not necessary, therefore, to consider the Examiner’s rejection of Claim 11-15 as indefinite under 35 U.S.C. § 112, ¶ 23. See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (Affirmance of rejection of all claims under § 103(a) made it unnecessary to reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (Having decided a single dispositive issue, the ITC was not required to review other matters decided by the presiding officer). Decision The Examiner’s decision holding the subject matter of Claims 1-15 unpatentable under 35 U.S.C. § 103(a) is affirmed. Time Period for Response No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED sld 3 We note that Applicant’s argument that the phrase “the liquid hydrocarbonaceous product” appearing in claims 11-15 finds antecedent support in Claim 1 (Brief 6) is not supported by the record. Applicant’s amendment of August 5, 2009, eliminated that phrase from claim 1. See also Corrected Claims Appendix filed April 13, 2011. Copy with citationCopy as parenthetical citation