IFP Energies nouvelles

Patent Trials and Appeals Board

Dec 24, 2020

2020000316 (P.T.A.B. Dec. 24, 2020)

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.
15/214,882 07/20/2016 Florent GUILLOU PET-3093 5768
23599 7590 12/24/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
STEIN, MICHELLE
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORENT GUILLOU, ARNAUD BAUDOT,
CHARLES-PHILIPPE LIENEMANN, ALEXANDRE GIBERT,
KARIN BARTHELET, and FABIEN PORCHERON
Appeal 2020-000316
Application 15/214,882
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed July 20, 2016, as amended (“Spec.”); Final Office Action dated Nov. 5,
2018 (“Final Act.”); Appeal Brief filed May 7, 2019 (“Appeal Br.”), and
claims 1, 4, and 20–23 as amended on August 31, 2018 (see infra
Background and Clarifications); Examiner’s Answer dated Aug. 6, 2019
(“Ans.”); and Reply Brief filed Oct. 7, 2019 (“Reply Br.”).
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The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 1, 4, and 10–23.3
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a method for eliminating mercury in a heavy
hydrocarbon-containing feedstock. Claim 1 (see infra p. 5), reproduced
below, is illustrative of the claimed subject matter:
1. A process for eliminating mercury contained in a heavy
hydrocarbon-containing feedstock upstream of a main
fractionation unit (3000), comprising
a) transforming non-elemental mercury contained in
compounds of said feedstock to elemental mercury in a
conversion unit (900) at a target temperature during a fixed
residence time and adapted to said target temperature so that at
least 90% by weight of non-elemental mercury contained in the
compounds of said feedstock are converted to elemental
mercury, in the absence of hydrogen and in the absence of a
catalyst, wherein:
- for the target temperature of said feedstock being between
150°C and 175°C, the residence time of said feedstock in the
conversion unit (900) is between 150 and 2700 minutes; and/or
- for the target temperature of said feedstock being greater than
175°C and less than or equal to 250°C, the residence time of
said feedstock in the conversion unit (900) is between 100 and
900 minutes; and/or

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as IFP
Energies Nouvelles. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).

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- for the target temperature of said feedstock being greater than
250°C and less than or equal to 400°C, the residence time of
said feedstock in the conversion unit (900) is between 5 and 70
minutes; and/or
- for the target temperature of said feedstock being greater than
400°C, the residence time of said feedstock in the conversion
unit (900) is between 1 and 10 minutes;
b) separating the feedstock obtained in stage a) in a separation
unit (5000), which is a distillation column, in order to produce a
liquid effluent (103) and a gaseous effluent (203) comprising
elemental mercury;
c) bringing into contact the gaseous effluent (203) originating
from stage b) comprising the elemental mercury with a mercury
capture material contained in a unit for the capture of mercury
(6000), in order to produce an effluent that is at least partially
de-mercurized (204), and
d) fractionating the liquid effluent (103) obtained in stage b) in
a main fractionation unit (3000), which main fractionation unit
(3000) is a distillation column at atmospheric pressure, and
wherein the elimination of the mercury contained in the heavy
hydrocarbon-containing feedstock occurs upstream of the main
fractionation unit (3000),
and wherein stages a) and b) are carried out separately.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Brown US 4,885,080 Dec. 05, 1989
Lord III US 2015/0108040 A1 Apr. 23, 2015

REJECTIONS
1. Claim 4 is rejected under 35 U.S.C. § 112(d) for failing to
further limit the subject matter of the claim upon which it depends.
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2. Claims 1, 4, and 10–23 are rejected under 35 U.S.C. § 103 as
unpatentable over Lord, as evidenced by Brown.
3. Claims 1, 4, and 10–23 are provisionally rejected on the ground
of nonstatutory double patenting as unpatentable over claims 1, 2, 4–12, and
14–22 of copending Application No. 15/214,8864.
BACKGROUND AND CLARIFICATIONS
On March 27, 2018, the Appellant filed a Request for Continued
Examination together with an amendment to the claims. On May 30, 2018,
the Examiner issued a Non-Final Rejection indicating that the amendment
had been entered and claims 1, 4, and 10–16 were pending. On August 31,
2018, the Appellant filed an Amendment adding new claims 17–23. The
Examiner issued a Final Rejection on November 5, 2018, indicating that
claims 1, 4, and 10–23 were pending and rejected under 35 U.S.C. § 103, as
well as provisionally on the ground of nonstatutory double patenting. On
January 30, 2019, the Appellant filed an amendment revising the claim 4
language. This amendment was not entered. See Advisory Action dated
February 11, 2019. On May 7, 2019, the Appellant filed the Appeal Brief
together with an Amendment cancelling claim 4. The Appellant included
only claims 1 and 10–23 in the Appeal Brief Claims Appendix.

4 The Appellant identifies the present appeal as related to the appeal in
copending application 15/214,886 (Appeal 2020-000214). Appeal Br. 1. The
Application Data Sheets in the present and copending applications, both
filed on July 20, 2016 pursuant to 37 C.F.R. § 1.76, list the same inventors
and Applicant.
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The Examiner issued an Advisory Action on May 29, 2019, stating
that the May 7 “amendments to the claims have not been entered as they
include new claims 17–23 which were not previously examined.” Thereafter,
on June 4, 2019, the Examiner issued a Notification of Non-Compliant
Appeal Brief, stating that “[t]he Claims Appendix is deficient as it does not
match the last entered amendment filed 3/27/18.” On June 5, 2019, the
Appellant filed a revised Claims Appendix containing claims 1 and 10–16.
On June 12, 2019, the Examiner issued a second Notification of Non-
Compliant Appeal Brief, stating that the Claims Appendix filed on June 5 “is
non-compliant as it does not match the last entered amendment (specifically
claim 4). The last entered amendment was filed on 3/27/2018.” In response,
the Appellant filed a revised Claims Appendix on June 20, 2019, containing
claims 1, 4, and 10–16, but stated that “[c]laim 4 is not being appealed, and
as such, there should be no requirement for it to be present in the claims
appendix of the Appeal Brief.” In the Answer, the Examiner withdraws the
Section 103 rejection of claims 1, 4, and 10–23 and enters a new Section 103
rejection of the same claims. See Ans. 5, 9.
Based on our review of the record, and contrary to the Examiner’s
statements in the June 4 and June 20, 2019 Notifications of Non-Compliant
Appeal Brief, the last entered amendment was filed on August 31, 2018. We
determine that claims 1, 4, and 10–23, as amended on August 31, 2018, are
pending and finally rejected, and our discussion below refers to the claims as
amended on August 31, 2018. We find that the Examiner’s misstatements
are harmless error as the Appellant, at the time the Appeal Brief was filed,
correctly understood that claims 17–23 were pending, and presented
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arguments in support of patentability of claim 20. See Appeal Br. 26–28.
The Examiner addressed the merits of these arguments in the Answer. See
Ans. 14.
As to the Examiner’s new Section 103 rejection in the Answer, the
Appellant observes that “[t]he apparent difference from the previous
rejection[] appears to be that the Examiner is making a few differently
phrased allegations and/or providing new or modified rationales for the same
conclusions as before. However, there does not appear to be much difference
in substantive approach.” Reply Br. 1. Accordingly, in addition to the
arguments in the Reply Brief, we consider the arguments in the Appeal Brief
to the extent applicable to the new Section 103 rejection.
OPINION
The Appellant does not appeal the rejections of claim 4. See Response
to Notice of Non-Compliant Appeal Brief, filed June 20, 2019. Accordingly,
we summarily sustain the 35 U.S.C. § 112(d), 35 U.S.C. § 103, and double
patenting rejections of claim 4.
Rejection under 35 U.S.C. § 103
The Examiner rejected claims 1, 4, and 10–23 under 35 U.S.C. § 103
as unpatentable over Lord, as evidenced by Brown. Ans. 5–8. The Appellant
argues in support of patentability of claims 1 and 10–23 as a group, but also
separately argues in support of patentability of claim 20. See generally
Appeal Br. 5–28; Reply Br. 1–8. When the Appellant argues multiple claims
subject to the same ground of rejection as a group, “the Board may select a
single claim from the group . . . and may decide the appeal as to the ground
of rejection with respect to the group . . . on the basis of the selected claim
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alone.” 37 C.F.R. § 41.37(c)(iv). We select claim 1 as representative of
rejected claims 1, 10–19, and 21–23.
Claim 1
Claim 1 recites “[a] process for eliminating mercury contained in a
heavy hydrocarbon-containing feedstock upstream of a main fractionation
unit (3000)” comprising four stages. In a first stage (stage (a)), non-
elemental mercury contained in compounds of a heavy hydrocarbon-
containing feedstock is transformed to elemental mercury. In a second stage
(stage (b)), feedstock obtained in the first stage is separated to produce a de-
mercurized, liquid effluent and an elemental mercury-containing, gaseous
effluent. Claim 1 explicitly recites that stage (a) and stage (b) are carried out
separately. In claim 1’s third stage (stage (c)), the stage (b) gaseous effluent
is contacted with a mercury capture material and in the fourth stage (stage
(d)), the stage (b) liquid effluent is fractionated.
The Examiner finds that Lord discloses the claim 1 process except
that Lord does not explicitly disclose (1) the residence time of the feedstock
in the conversion unit during the transforming step (stage (a)), (2) separately
carrying out the transforming step (stage (a)) and the separating step (stage
(b)), and (3) sending the liquid effluent to a main fractionation unit or
distillation column (stage (d)). Ans. 5. We discuss the Examiner’s and the
Appellant’s respective positions regarding each of these limitations below.
See Appeal Br. 20.
As to the residence time of the feedstock in the conversion unit during
the transforming step (stage (a)), the Examiner finds that Lord discloses
transforming at least 90% by weight of non-elemental mercury in heavy
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hydrocarbon-containing feedstock at temperatures of 100–350 °C, and that
the extent of conversion can be controlled by adjusting the temperature or
holding time of the oil at a specified temperature. Ans. 6, 11 (citing Lord
¶¶ 17, 18, 78). The Examiner further finds that Lord teaches that “the rate at
which mercury is thermally reduced to elemental mercury is strongly
influenced by the composition of the crude.” Id. at 6, 11 (citing Lord ¶ 79).
Referencing Lord Figure 2, the Examiner finds that Lord discloses the same
trends as claimed for achieving a specified mercury conversion: at lower
temperatures, longer residence times are required, and at higher
temperatures, shorter residence times result in the same conversion. Id. at
11–12. The Examiner further finds that Lord describes an embodiment in
which the holding temperatures and times (“between 200° C. and 250° C. for
between 60 and 600 seconds [(1 to 10 minutes)]” (Lord ¶ 25)) overlap with
the claimed ranges of “greater than 250°C and less than or equal to 400°C”
and “between 5 and 70 minutes” (claim 1). Ans. 12. Based on these findings,
the Examiner determines that adjusting the conversion time and temperature
of the heavy hydrocarbon-containing feedstock to values within the recited
ranges would have been a matter of routine optimization. See id. at 6.
The Appellant argues that although Lord teaches mercury conversion
temperatures as high as 350°C, “the data instead of proceeding to higher
amounts, suggests that for reduced residence times significantly lower
temperature levels are adequate.” Appeal Br. 19 (citing Lord Fig. 2). The
Appellant also disputes the Examiner’s finding that Lord teaches conversion
times and temperatures that overlap the claimed ranges, noting that the
claimed residence times are between 100 and 900 minutes at a temperature
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of 250°C. Id. at 23–24; see also Reply Br. 5–6. The Appellant’s arguments
are not persuasive of reversible error.
A prima facie case of obviousness exists where the prior art and
claimed ranges overlap, as well as in those cases where the claimed range
and the prior art range, though not overlapping, are sufficiently close that
one skilled in the art would have expected them to have the same properties.
See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Thus, the
fact that the Appellant’s claimed ranges overlap Lord’s conversion times and
are adjacent to the temperatures in Lord’s embodiment is sufficient to
support a prima facie case of obviousness, thereby shifting the burden to the
Appellant to show that the claimed ranges are critical. See In re Geisler, 116
F.3d 1465, 1469–70 (Fed. Cir. 1997). Although claim 1 recites a 100 to 900
minute conversion time for a target feedstock temperature “equal to 250°C,”
the Appellant has not identified, nor do we find, any evidence of criticality
in the recited ranges. Rather, the Specification describes the claim 1 ranges
as advantageous (Spec. 15:17–31) and describes a 15 to 150 minute
conversion time for feedstock temperatures of “greater than 225°C and less
than or equal to 250°C” (id. at 16:11–13 (emphasis added)) as “[e]ven more
preferabl[e] (id. at 16:1).” At most, the Specification supports a finding that
the claimed ranges provide superior results, but not unexpected results. See
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y
definition, any superior property must be unexpected to be considered as
evidence of non-obviousness.”).
The Appellant contends that the ordinary artisan would not have
arrived at the claimed conversion temperature and time ranges because
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although the trend shown in Lord Figure 2 “is that higher temperatures lead
to faster conversion, the relationship among the amount of residence time
and temperature and conversion percentage are not comparable to the claim
recited amounts.” Reply Br. 7. This argument is not persuasive.
As acknowledged by the Appellant, Lord “[p]aragraph 79 does
indicate that the rate at which mercury is reduced is influenced by the
composition of the crude.” Reply Br. 7; see also Lord ¶ 85 (“The kinetics,
fluid flow and heat transfer of a process are most important when upscaling
for large-scale designs. To retain the same reaction rate, the other variables
in the process design must be decreased or increased as necessary. . . .
However, a balance must be struck to prevent thermal degradation of other
components in the crude oil or destruction of processing equipment.”). Lord
explicitly describes Figure 2 as “representing the kinetic behavior predicted
using the Arrhenius parameters of the . . . equations for the specific crude
oil that was used in the experiments.” Lord ¶ 84. Lord discloses that
“[m]ercury concentrations in crude oil have been reported from as low as