Edmundo Van Doesburg

Patent Trials and Appeals Board

Sep 24, 2020

13383887 - (D) (P.T.A.B. Sep. 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.
13/383,887 02/07/2012 Edmundo Steven Van Doesburg TS2368-US-PCT 1315
23632 7590 09/24/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
PEREZ, JELITZA M
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
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 EDMUNDO STEVEN VAN DOESBURG
____________

Appeal 2019-006423
Application 13/383,887
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6, 7, 10–12, 18–20, and 23–27.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Shell Oil
Company. Appeal Br. 1.
Appeal 2019-006423
Application 13/383,887

2
The invention is generally directed to a process for hydrotreating a
hydrocarbon oil employing at least a first and a second reactor vessel in
series. Spec. 1. Claim 1 illustrates the invention (formatting added):
1. A process for hydrotreating a hydrocarbon oil, which is a
lubricating oil containing at least 95% by weight hydrocarbons
boiling in the range of from 150 to 400 °C, employing at least a
first reactor vessel and a second reactor vessel, which process
comprises:
(i) contacting the hydrocarbon oil in the first reactor vessel
at a first elevated temperature and a first elevated pressure with
a hydrodesulphurization catalyst, comprising one or more
metals cobalt and nickel and one or more metals molybdenum
and tungsten on a first solid carrier, in the presence of a
hydrogen-containing gas, thereby consuming hydrogen and
yielding an effluent;
(ii) passing the effluent to a gas-liquid separator providing
for a contaminated hydrogen-containing gas and a partly
hydrotreated hydrocarbon oil;
(iii) cleaning the contaminated hydrogen-containing gas to
yield a clean hydrogen-containing gas;
(iv) stripping the partly hydrotreated hydrocarbon oil using a
stripping column employing a used hydrogen-containing gas as
a stripping gas to provide the hydrogen-containing gas removed
from the partly hydrotreated hydrocarbon oil to provide a
stripped partly hydrotreated hydrocarbon oil;
(v) contacting the stripped partly hydrotreated hydrocarbon
oil within the second reactor vessel that defines an upper
reaction zone, including a hydrodewaxing catalyst, comprising
a noble metal selected from the group consisting of platinum,
palladium, iridium and ruthenium on a second solid carrier, in
the presence of the clean hydrogen-containing gas, thereby
consuming hydrogen and yielding a product, wherein at least
80% of the hydrogen consumed in the contacting steps is
supplemented by fresh make-up hydrogen fed to the second
reactor vessel and a lower separation zone providing for
Appeal 2019-006423
Application 13/383,887

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separating the product into a hydrotreated hydrocarbon oil and
the used hydrogen-containing gas, which hydrotreated
hydrocarbon oil can be recovered as product; and,
(vi) transporting at least a portion of the used hydrogen-
containing gas obtained in the separating step to the stripping
column for use as the stripping gas.

Independent claim 18 is directed to a process similar to claim 1 but
recites additional features.
Appellant requests review of the Examiner’s rejection of claims 1–3,
6, 7, 10–12, 18–20, and 23–27 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ravella (US 2002/0074261 A1, published June 20, 2002),
Thielemans (EP 0 611 816 A1, published August 24, 1994), Schorfheide
(US 4,243,519, issued January 6, 1981), and Shiroto (US 4,399,026, issued
August 16, 1983). Appeal Br. 4; Non-Final Act. 3.
Appellant presents arguments for independent claim 1 and indicates
that all of the appealed claims stand or fall together with independent claim
1. Appeal Br. 4. Accordingly, we select claim 1 as representative of the
subject matter claimed and decide the appeal based on the arguments
presented for claim 1.

OPINION
After review of the respective positions the Appellant provides in the
Appeal Brief2 and the Examiner provides in the Non-Final Action and the
Answer, we affirm the Examiner’s prior art rejection of claims 1–3, 6, 7, 10–

2 Appellant did not file a Reply Brief.
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Application 13/383,887

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12, 18–20, and 23–27 based essentially on the Examiner’s fact-finding and
reasoning. We add the following for emphasis.
Independent claim 1
We refer to the Examiner’s Non-Final Action for a complete
statement of the Examiner’s rejection of claim 1. Non-Final Act. 3–11.
Appellant argues that the combined teachings of the cited art do not
teach the following claimed features:
1. a two-reaction stage process for treating lubricating oil,
whereby a hydrodesulfurization reaction stage and a hydrodewaxing reaction
stage are combined with interstage separation that includes the two steps of
gas-liquid separation followed by stripping of the liquid phase from the gas-
liquid separation step;
2. the use of a single reactor vessel defining dual-zones including
a hydrodewaxing zone and separation zone to provide for separation of
hydrogen and treated lubricating oil product and for recycling the separated
hydrogen to the stripper of the interstage two-step gas-liquid separation
system for use as a stripping fluid;
3. the process that includes the above arrangement of process
steps with passing of the stripper overhead gas stream (hydrogen-containing
gas) to the hydrodesulfurization reaction stage;
4. a requirement that most of the makeup hydrogen that is
consumed by the overall process (i.e., at least 80%) must be introduced into
the hydrodewaxing zone of the second stage reactor vessel. Appeal Br. 8.
Appellant’s arguments do not identify error in the Examiner’s
determination of obviousness for the reasons the Examiner presents.
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It is well established that the obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”). “[T]he test
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at
425–26.
While Appellant’s arguments highlight several claim 1 features, the
arguments do not address the reasons the Examiner presents in support of
the rejection. See generally Non-Final Act. and Ans. “[S]tatement[s] which
merely point[] out what a claim recites will not be considered [] argument[s]
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the Examiner relies on impermissible hindsight
to pick various features from among the numerous references to combine
them with the primary reference to arrive at the claimed invention. Appeal
Br. 9. According to Appellant, Ravella provides for dewaxing of its process
feedstock while the processes of the other references provide only for
hydrotreating of their feedstocks. Id. Thus, Appellant asserts each of the
processes of the four references deals with a different type of feed and
provides a different function, making the combinations improper. Id. In
addition, Appellant also contends that the large number of references used to
support the obviousness rejection itself suggests a lack of obviousness of the
claimed process. Id.
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Application 13/383,887

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Appellant’s arguments lack persuasive merit.
As the Examiner finds in the Non-Final Office Action, Ravella
discloses hydrodewaxing as one among various well known processes for
treating hydrocarbon feedstocks. Non-Final Act. 5; Ravella ¶ 26.
Appellant’s arguments do not address this finding by the Examiner.
Moreover, given that Thielemans teaches it was known to combine a
hydrotreatment process and a separation process in a single reactor (Non-
Final Act. 5–6),3 Appellant has not explained adequately why one skilled in
the art, using no more than ordinary creativity, would not have been capable
of adapting Thielemans’s single reactor to incorporate a hydrodewaxing
step, in view of Ravella’s disclosure, if that particular hydroprocessing is
desired for the hydrocarbon feedstock to be treated. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”); see also In re Sovish, 769
F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of
ordinary skill in the art).
With respect to the Examiner’s reliance on a “large number of
references” (Appeal Br. 9), reliance on a large number of references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
Here, the Examiner presents a detailed articulated rationale for combining
the teachings of the cited art to arrive at the claimed invention. Non-Final
Act. 3–11. As we indicate above, Appellant’s arguments do not refute
adequately the Examiner’s reasons in support of the rejection. Therefore,

3 Appellant discusses the reference to Thielemans in the Specification and
acknowledges the above-noted teaching. Spec. 2–3.
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Appellant has not explained adequately why the Examiner’s reliance on a
total of four references is a large number of references to support an
obviousness rejection.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
3, 6, 7, 10–12, 18–20, and 23–27 for the reasons the Examiner presents and
we give above.

DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 7,
10–12, 18–
20, 23–27
103(a) Ravella.
Thielemans,
Schorfheide,
Shiroto
1–3, 6, 7,
10–12, 18–
20, 23–27

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)(iv).

AFFIRMED