Saudi Arabian Oil Company

Patent Trials and Appeals Board

Mar 12, 2020

15061545 - (D) (P.T.A.B. Mar. 12, 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.
15/061,545 03/04/2016 Fahad A. Al-Amri 0004159.005473 4236
35979 7590 03/12/2020
Bracewell LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
MORELLO, JEAN F
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
03/12/2020 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@bracewell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FAHAD A. AL-AMRI
____________

Appeal 2019-003325
Application 15/061,545
Technology Center 2800
____________

Before MONTÉ T. SQUIRE, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1, 3, 4, 6, 8, 10, 12, 14, 16, 17,
19, and 20.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Saudi Arabian Oil Company as the
real party in interest. Appeal Brief filed December 21, 2018 (“Appeal Br.”)
at 3.
2 Final Office Action entered July 26, 2018 (“Office Act.”) at 1.
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Application 15/061,545

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CLAIMED SUBJECT MATTER
Appellant claims a method for determining a salt concentration in
crude oil (independent claim 1), a non-transitory computer-readable storage
medium having executable code stored thereon for determining the salt
concentration in crude oil (independent claim 8), and a plant information
system (independent claim 14). Appeal Br. 3–5. Claim 1 illustrates the
subject matter on appeal, and is reproduced below with contested subject
matter italicized:
1. A method for determining a salt concentration in crude
oil, comprising:
periodically obtaining at a time interval, at a plant
information system, a plurality of parameters associated with a
desalting process, the plurality of desalting process parameters
comprising a demulsifier flowrate, a crude oil temperature, a
crude oil flowrate, a desalting electrostatic grids voltage, a wash
water flowrate, and a disposal water flowrate;
determining, at the plant information system, the salt
concentration in crude oil output from the desalting process
using the plurality of parameters according to a first order
continuous variables model;
comparing the determined salt concentration to a
threshold concentration; and
adjusting at least one of the plurality of parameters
associated with the desalting process based on the comparison.

Appeal Br. 27 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered January 25, 2019 (“Ans.”):3

3 The Examiner withdrew the rejection of claims 1, 3, 4, 6, 8, 10, 12, 14, 16,
17, 19, and 20 under 35 U.S.C. § 101 set forth in the Final Action (Final
Act. 6–9) in the Answer. Ans. 3.
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I. Claims 1, 3, 4, 6, 8, 10, 12, 14, 16, 19, and 204 under 35 U.S.C.
§ 103 as unpatentable over Snawerdt (US 2011/0100877 Al, published May
5, 2011); and
II. Claim 17 under 35 U.S.C. § 103 as unpatentable over Snawerdt
in view of Al-Shafei et al. (US 2013/0026082 Al, published January 31,
2013).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1, 3, 4, 6, 8, 10, 12, 14, 16, 17, 19, and 20 under 35 U.S.C. § 103, for
reasons set forth in the Appeal and Reply Briefs, and below.
Claim 1 requires the recited method to comprise, in part, determining
the salt concentration in crude oil output from a desalting process, using a
plurality of recited parameters associated with the desalting process
according to a first order continuous variables model. Independent claims 8
and 14 also include these limitations.
The Examiner finds that Snawerdt discloses obtaining desalting
process characteristics corresponding to those recited in each of the
independent claims, performing a statistical calculation of the desalting
process performance based upon the measured process characteristics, and
adjusting a control setting of the desalting process as a function of the

4 Although the Examiner includes claim 17 in the header for this rejection
(Rejection I) in the Final Action (Final Act. 9), the Examiner does not
address claim 17 in the body of the rejection, while addressing the remaining
claims listed in the header. Final Act. 9–12. The Examiner, however, sets
forth a separate rejection directed to claim 17 in the Final Action. Final
Act. 12. We, therefore, treat inclusion of claim 17 in the header for
Rejection I as an inadvertent typographical error.
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statistical calculation. Final Act. 9–10 (citing Snawerdt ¶¶ 8, 9, 20, 32–34,
37–44, 109; claims 1, 7, 8, 11, 12, 18, and 109). The Examiner finds that
although Snawerdt “fails to teach the use of a first order continuous
variables model,” Snawerdt “consider[s] all of the same data and
controllable process parameters [as recited in the independent claims] in
desalting crude oil.” Final Act. 10. The Examiner concludes that “[t]o
consider all of the same data and controllable parameters in desalting crude
oil in any abstract interpretation of the data compared to baseline data that
is obtainable from conventional measurement techniques, would have been
obvious to a person having ordinary skill in the art as of the effective filing
date of the invention.” Id. (emphasis added).
Appellant argues that the Examiner does not provide objective
evidence or articulated reasoning with rational underpinning for why
consideration of “all of the same data and controllable parameters in
desalting crude oil in any abstract interpretation of the data compared to
baseline data that is obtainable from conventional measurement techniques”
would have been obvious to one of ordinary skill in the art before the
effective filing date of the present application. Appeal Br. 25. Appellant
argues that it would not have been obvious to one of ordinary skill in the art
to determine a salt concentration according to a first order continuous
variables model using the process parameters recited in the independent
claims because Snawerdt discloses directly measuring salt concentration at a
measurement station. Id. at 23–24 (citing Snawerdt ¶ 36). Appellant argues
that the Examiner does not provide evidence for why, in the absence of
impermissible hindsight, “one of ordinary skill in the art would find it
obvious to use a completely different technique to determine salt
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concentration when Snawerdt teaches a technique that is clearly suitable for
the invention described therein.” Id. at 24.
Appellant points out that Appellant’s Specification discusses direct
measurement of salt concentration from desalted crude oil, and describes
various drawbacks of such direct measurement, which are addressed by
Appellant’s claimed invention. Id. at 24 (citing Spec. ¶ 2).
The Examiner responds to Appellant’s arguments in the Answer by
asserting that Appellant’s claimed invention requires direct measurement of
the salt concentration of desalted crude oil “in order to establish a first order
continuous variable.” Ans. 5 (citing Spec. ¶¶ 34–36, 40; Fig. 2). The
Examiner asserts that “the concept of creating a model (first order
continuous variables model) requires . . . an initial laboratory measurement
of salt concentration to validate the model.” Id. at 6.
The Examiner further asserts in the Answer that, before the effective
filing date of the present application, one of ordinary skill in the art “would
have gathered data known to be associated with the desalting process of
Snawerdt and made a model (or data table or a solvable set of linear
equations) based on the known desalting parameters and a measured salt
concentration. This was routine mathematical practice that does not rise
above the level of one of ordinary skill in the art.” Id. at 5. The Examiner
concludes that “based on what was known in the art to be measured and
controlled during desalting (in order to desalt crude oil) as taught by
Snawerdt, and what was within the scope of one of ordinary skill in the art,
appellant’s claimed invention would have been obvious to a person having
ordinary skill in the art before the effective filing date of the invention.” Id.
at 6.
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Contrary to the Examiner’s assertions, as Appellant points out in the
Reply Brief, Appellant’s claimed invention does not require direct
measurement of salt concentration. Reply Br. 2–3. The portion of
Appellant’s Specification cited by the Examiner to support the Examiner’s
assertions is an experimental example that describes generating a salt
concentration model from desalting process parameters, including the
demulsifier flow rate, the crude oil temperature, the crude oil flow rate, the
desalting electrical grid voltage, and the wash water flowrate. Spec. ¶¶ 30–
33. The Specification explains that a salt concentration model was
generated by modeling the process parameter data using regression analysis,
and the resulting model “was then verified by comparing the actual salt
concentration determined by laboratory analysis with the salt concentration
calculated by the salt concentration model.” Spec. ¶ 34. The Specification
further indicates that “[i]n some embodiments, the accuracy of the salt
concentration model may be verified by comparing the calculated salt
concentration from the model against actual salt concentrations from
laboratory analysis (block 218).” Spec. ¶ 40.
Thus, rather than indicating that direct measurement of salt
concentration is a required aspect of Appellant’s invention as the Examiner
asserts, the Specification indicates that direct salt concentration
measurement may be performed to verify the accuracy of a salt
concentration model generated by measuring process parameters associated
with a desalting process according to Appellant’s invention. The
Specification’s use of “may” indicates that such verification is optional, as
does the Specification’s indication that verification may be performed “in
some embodiments” of Appellant’s invention.
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Furthermore, consistent with the Specification, the plain language of
the pending claims does not require direct measurement of salt
concentration, because the claims do not recite such a process step. Nor do
the claims require determining the salt concentration according to the recited
model with any particular degree of accuracy. Consequently, as Appellant
argues, the Examiner’s assertion that the claims require direct salt
measurement improperly imports limitations from the Specification into the
claims.
Moreover, although the Examiner asserts that one of ordinary skill in
the art “would have gathered data known to be associated with the desalting
process of Snawerdt and made a model (or data table or a solvable set of
linear equations) based on the known desalting parameters and a measured
salt concentration,” the Examiner does not articulate a reason having a
rational underpinning as to why one of ordinary skill in the art would have
generated a first order continuous variables model from desalting process
parameters disclosed in Snawerdt to determine the concentration of salt in
desalted crude oil. The Examiner does not explain why, in view of
Snawerdt’s disclosure of directly measuring the concentration of salt in
desalted crude oil, one of ordinary skill in the art would have used a different
approach to measuring the salt concentration by generating a first order
continuous variables model based on desalting process parameters. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
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In addition, the Examiner does not provide any objective evidence to
support the Examiner’s assertion that it would have been “routine
mathematical practice” in the art to generate a first order continuous
variables model from desalting process parameters disclosed in Snawerdt.
Even if it would have been within the level of ordinary skill in the art to
generate a first order continuous variables model from desalting process
parameters disclosed in Snawerdt, simply because one of ordinary skill in
the art could have done so would not have made it obvious to do so absent a
reason that would have motivated one of ordinary skill in the art to so
modify Snawerdt’s process. Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073
(Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations
or modifications of the prior art to arrive at the claimed invention.”).
Accordingly, on this appeal record, the Examiner does not provide a
persuasive, reasoned explanation, supported by objective evidence, for why
the relied-upon disclosures of Snawerdt would have led one of ordinary skill
in the art to determine the salt concentration in crude oil output from a
desalting process, using a plurality of parameters associated with the
desalting process according to a first order continuous variables model, as
required by independent claims 1, 8, and 14. It follows that the Examiner
does not establish a prima facie case of obviousness of the subject matter
recited in claims 1, 8, and 14 within the meaning of 35 U.S.C. § 103. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability”)
We, accordingly, do not sustain the Examiner’s rejection of
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independent claims 1, 8, and 14, and claims 3, 4, 6, 10, 12, 16, 17, 19, and
20, which each depend from either claim 1, 8, or 14, under 35 U.S.C. § 103.
CONCLUSION

Claims

35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed
1, 3, 4, 6, 8,
10, 12, 14, 16,
17, 19, 20
103 Snawerdt 1, 3, 4, 6, 8, 10,
12, 14, 16, 19,
20
17 103 Snawerdt,
Al-Shafei
17
Overall
Outcome
1, 3, 4, 6, 8, 10,
12, 14, 16, 17,
19, 20

REVERSED