SHELL OIL COMPANY

Patent Trials and Appeals Board

Feb 16, 2021

2020000722 (P.T.A.B. Feb. 16, 2021)

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.
15/114,184 07/26/2016 Vikrant Nanasaheb Urade SP0261-US-PCT 4376
23632 7590 02/16/2021
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
CEPLUCH, ALYSSA L
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
02/16/2021 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VIKRANT NANASAHEB URADE,
ALAN ANTHONY DEL PAGGIO,
MADHUSUDHAN RAO PANCHAGNULA,
LAXMI NARASIMHAN CHILKOOR SOUNDARARAJAN, and
SRIKANT GOPAL
____________________

Appeal 2020-000722
Application 15/114,1841
Technology Center 1700
____________________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–16.
We have jurisdiction under 35 U.S.C. § 6(b).2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Shell Oil Company as the real party
in interest. Appeal Brief (“Br.”) filed May 24, 2019, 2.
2 Our Decision additionally refers to the Specification (“Spec.”) filed July
26, 2016, the Final Office Action (“Final Act.”) dated August 27, 2018, and
the Examiner’s Answer (“Ans.”) dated August 23, 2019.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The subject matter on appeal relates to processes for producing liquid
hydrocarbon products from solid biomass and/or residual waste feedstocks
(see, e.g., claim 1). The Specification states that different locations have
different specifications for gasoline and diesel fuel. Spec. 2:24–25.
According to the Specification, hydrocarbon liquid products made via
hydropyrolysis and hydroconversion of lignocellulose and waste plastics-
containing feedstocks might not meet specifications for diesel and gasoline
range products in various locations. Id. at 3:7–11. For example, these feed
materials may have an undesirable distribution of various classes or
hydrocarbon molecules (e.g., aromatics, paraffins, and napthenes), which
may result in a poor octane number for gasoline and a poor cetane number
for diesel. Id. at 3:11–15. The Specification states it would be desirable to
provide an improved process for the conversion of biomasses containing
lignocellulose into liquid hydrocarbon products that meet gasoline and/or
diesel specification in one or more worldwide locations. Id. at 3:15–20.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. A process for producing liquid hydrocarbon products
from solid biomass and/or residual waste feedstocks, said
process comprising the steps of:

a) hydropyrolysing the solid feedstock in a
hydropyrolysis reactor vessel in the presence of molecular
hydrogen and one or more deoxygenation catalyst, producing a
product stream comprising partially deoxygenated
hydropyrolysis product, H2O, H2, CO2, CO, C1–C3 gases, char
and catalyst fines;
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b) removing said char and catalyst fines from said
product stream;

c) hydroconverting said partially deoxygenated
hydropyrolysis product in a hydroconversion reactor vessel in
the presence of one or more hydroconversion catalyst and of the
H2O, CO2, CO, H2, and C1–C3 gas generated in step a),
producing a vapour phase product comprising substantially
fully deoxygenated hydrocarbon product, H2O, CO, CO2, and
C1–C3 gases;

d) condensing the vapour phase product of step c) to
provide a liquid phase product comprising substantially fully
deoxygenated C4+ hydrocarbon liquid and aqueous material
and separating said liquid phase product from a gas phase
product comprising H2, CO, CO2, and C1–C3 gases;

e) removing the aqueous material from the substantially
fully deoxygenated C4+ hydrocarbon liquid; and

f) hydroprocessing at least a portion of the substantially
fully deoxygenated C4+ hydrocarbon liquid in a
hydroprocessing reactor vessel in the presence of hydrogen and
one or more hydroprocessing catalysts, each hydroprocessing
catalyst comprising at least one reduced metal on a solid
support, in order to provide an upgraded liquid hydrocarbon
stream;

wherein the upgraded liquid hydrocarbon stream is
reduced in total aromatics content, benzene content, or both,
relative to the substantially fully deoxygenated C4+
hydrocarbon liquid.

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REJECTIONS ON APPEAL
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103:

I. Claims 1, 2, 4–6, 10–14, and 16 as unpatentable over
Marker,3 Ellis,4 and Shih;5
II. Claim 3 as unpatentable over Marker, Ellis, Shih, and
McCall;6 and
III. Claims 7–9 and 15 as unpatentable over Marker, Ellis,
Shih, and Quignard.7 Final Act. 3–12.

B. DISCUSSION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the Examiner’s obviousness rejections. Therefore, we
affirm the stated rejections for substantially the fact findings, reasoning, and

3 Marker et al., US 8,492,600 B2, issued July 23, 2013 (“Marker”).
4 Ellis et al., US 2012/0266530 A1, published Oct. 25, 2012 (“Ellis”).
5 Shih, US 2011/0282118 A1, published Nov. 17, 2011.
6 McCall et al., US 2013/0305591 A1, published Nov. 21, 2013 (“McCall”).
7 Quignard et al., US 2011/0167713 A1, published July 14, 2011
(“Quignard”).
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conclusions set forth in the Examiner’s Answer, which we adopt as our own.
We offer the following for emphasis only.
Rejection I
Claims 1, 2, 4–6, 10–14, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Marker, Ellis, and Shih.
The Examiner finds Marker discloses a process for converting
biomass to a liquid product. Ans. 3. The Examiner finds the process
includes introducing solid biomass and molecular hydrogen into a
hydropyrolysis reactor that includes a deoxygenation catalyst to produce a
partially deoxygenated hydropyrolysis product, char, catalyst fines, and
other components. Id. The Examiner finds Marker’s process further
includes removing the char and catalyst fines, subjecting the refined product
to hydroconversion, cooling effluent from hydroconversion to condense
materials into gasoline and diesel liquid (a deoxygenated C4+ hydrocarbon
liquid), and separating gases from the liquid. Id. The Examiner finds that
Marker removes water before removing gases from the condensed liquid, but
concludes it would have been obvious to change the order of these steps. Id.
at 4.
The Examiner finds Marker does not disclose that its diesel product
includes aromatics or a hydroprocessing step to reduce the total aromatics
content of its substantially deoxygenated C4+ hydrocarbon liquid. Id. The
Examiner finds Ellis teaches that biomass containing lignin (a
lignocellulosic material) contains many aromatic precursors and that
pyrolysis compounds made from high lignin feedstocks are high in aromatic
compounds. Id. Based on these teachings, the Examiner determines one of
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ordinary skill in the art would have reasonably concluded that Marker’s
process would result in a product with a high aromatic content. Id. at 4–5.
The Examiner further finds Shih teaches that commercially available
diesel fuels are subject to various regulatory requirements, such as a
restriction on aromatics content. Id. at 5. The Examiner finds Shih teaches
reducing the amount of polynuclear aromatics and total aromatics in a diesel
product made from renewable sources. Id. The Examiner concludes it
would have been obvious to provide Marker’s diesel product to Shih’s
aromatic saturation step because Shih teaches the reduction of polynuclear
aromatics and total aromatics content for regulatory requirements.8 Id. at 5–
6.
Appellant contends the Examiner has not articulated sufficient
reasoning to explain why one of ordinary skill in the art would have
provided Marker’s product as the feedstock for Shih’s hydroprocessing
methods. Br. 3–4. Appellant argues that Marker’s process makes a
substantially fully deoxygenated hydrocarbon liquid product, whereas Shih’s
feeds are oils (e.g., oils including those primarily comprising triglycerides

8 Although the Examiner’s conclusion appears to modify Shih in view of
Marker, as modified in view of Ellis, whether the Examiner uses Marker as
the primary reference or Shih as the primary reference is irrelevant. See In
re Bush, 296 F.2d 491, 496 (CCPA 1961) (“In a case of this type where a
rejection is predicated on two references each containing pertinent disclosure
which has been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the rejection is stated to
be on A in view of B instead of on B in view of A, or to term one reference
primary and the other secondary.”). In other words, the record before us
does not appear to indicate any significant difference between modifying
Marker, in view of Ellis’s teaching, to use Shih’s aromatic saturation step
and modifying Shih to use Marker’s process and product, in view of Ellis.
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and free fatty acids), not a substantially fully deoxygenated hydrocarbon
liquid product or a feedstock derived from solid biomass and/or residual
waste feedstocks. Id. at 4–5. Appellant also argues the Examiner failed to
establish a reasonable expectation of success for the proposed modification
or that the result would have been predictable because Marker produces a
substantially fully deoxygenated hydrocarbon liquid and Shih uses the oil
feedstocks noted above. Id.
The Examiner responds to Appellant’s arguments by finding that both
Marker and Shih teach forming a hydroprocessed hydrocarbon diesel
product containing aromatics because Ellis reasonably shows that Marker’s
product would have contained aromatics. Ans. 13. The Examiner also finds
that both Marker and Shih teach the use of substantially deoxygenated feeds.
Id. at 13–14.
Appellant’s arguments are not persuasive of reversible error. Marker
discloses a process for thermochemically transforming biomass, such as
biological material including lignocellulosic materials, into high quality
liquid fuels. Marker 1:17–21. Marker’s product is a gasoline plus diesel
liquid product that has been substantially totally deoxygenated. Id. at 3:58–
61, 7:55–57. Ellis teaches a method of making pyrolysis oil and other
combustible compositions from microbial biomass. Ellis ¶ 2. Ellis discloses
that lignocellulosic material includes lignin, lignin contains many aromatic
precursors, and “[p]yrolysis oils produced from feedstocks high in lignin are
high in aromatic compounds.” Id. ¶¶ 44, 174. Ellis further teaches that
regulations require reduced heavy polynuclear aromatics in diesel and
reduced benzene in gasoline. Id. ¶ 174. Thus, Ellis’s disclosure supports the
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Examiner’s reasoning that Marker’s process, which uses lignocellulosic
material, would make a product including aromatic compounds.
Shih teaches making diesel fuel with a reduced polyaromatic content
and that regulatory requirements restrict the content of polyaromatic
hydrocarbons in diesel fuel. Shih ¶¶ 2–4. Shih discloses an aromatic
saturation step and that its product has an aromatic content of less than about
4 wt%. Id. ¶¶ 14, 39. Shih discloses that its feedstock may have a
biocomponent origin, such as a hydrotreated vegetable oil feed, a
hydrotreated fatty acid alkyl ester feed, or another type of hydrotreated
biocomponent feed. Id. ¶ 33. Shih also teaches that “[a] hydrotreated
biocomponent feed can be a biocomponent feed that has been previously
hydroprocessed to reduce the oxygen content of the feed to about 500 wppm
or less.” Id. Thus, although Shih discloses oils for its feedstock, Shih also
contemplates a hydrotreated biocomponent feed that has been reduced in
oxygen content. This teaching reasonably suggests that Shih’s aromatic
saturation step would have been suitable for processing Marker’s
substantially fully deoxygenated hydrocarbon liquid or that Marker’s
substantially fully deoxygenated hydrocarbon liquid would have been
suitable for Shih’s aromatic saturation step.
As a result, the Examiner’s findings and explanations articulate
reasoning with some rational underpinning to support the Examiner’s
combination of Marker, Ellis, and Shih. KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). The Examiner’s findings and explanations also
demonstrate a reasonable expectation of success in doing so. We note that
“[o]bviousness does not require absolute predictability of success . . . . all
that is required is a reasonable expectation of success.” In re O'Farrell, 853
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F.2d 894, 903–904 (Fed. Cir. 1988). Thus, the disclosures of Marker, Ellis,
and Shih support the Examiner’s findings and conclusion, which sets forth a
prima facie case of obviousness. Appellant does not respond to the
Examiner’s explanations in the Answer with a Reply Brief.
In order to overcome a rejection, Appellants must identify with
sufficient particularity what the Examiner did wrong, i.e., identify a
reversible error in the examiner’s rejection. Jung, 637 F.3d at 1365–66.
Although Appellant argues differences between Marker’s product and Shih’s
feedstocks, Appellant identifies these differences in a general manner
without specifying what differences would have made the proposed
modification non-obvious to one of ordinary skill in the art. For instance,
Appellant argues Marker’s product and Shih’s feedstocks have “a different
chemical composition and properties” and “the content of these materials are
very different.” Br. 5. However, Appellant does not specify what
differences in chemical composition Appellant is referring to and explain
how such a difference would have made the proposed combination
nonobvious. Nor does Appellant cite a specific property and explain why a
difference in properties would have made the proposed combination
nonobvious. Therefore, Appellants’ arguments lack the degree of specificity
for identifying a reversible error. In view of the Examiner’s findings and
explanations, a preponderance of the evidence in the record supports the
Examiner’s rejection.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejection of claims 1, 2, 4–6, 10–14, and 16
over Marker, Ellis, and Shih.
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Rejections II and III
Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over
Marker, Ellis, Shih, and McCall. Claims 7–9 and 15 are rejected under
35 U.S.C. § 103 as unpatentable over Marker, Ellis, Shih, and Quignard.
Appellant merely reiterates the arguments set forth in support of the
patentability of claim 1 and contends McCall and Quignard do not remedy
the deficiencies of the references applied in the rejection of claim 1. Br. 5.
For the reasons set forth above, there are no deficiencies in the rejection of
claim 1 that require curing by McCall or Quignard.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103 rejections of claims 3, 7–9, and 15.

CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–16 under 35 U.S.C. § 103 is affirmed.
SUMMARY
In summary:

Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 4–6,
10–14, 16 103
Marker, Ellis,
Shih
1, 2, 4–6,
10–14, 16
3 103 Marker, Ellis, Shih, McCall 3
7–9, 15 103 Marker, Ellis, Shih, Quignard 7–9, 15
Overall
Outcome 1–16

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED