Ex Parte Adams et al

Board of Patent Appeals and Interferences

Aug 13, 2012

10583758 (B.P.A.I. Aug. 13, 2012)

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.
10/583,758 06/21/2006 Nicholas James Adams TS5595US 4917
23632 7590 08/14/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
MCCAIG, BRIAN A
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
08/14/2012 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
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte NICHOLAS JAMES ADAMS
and GILBERT ROBERT BERNARD GERMAINE
________________

Appeal 2011-001980
Application 10/583,758
Technology Center 1700
________________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-4, 6-15 and 17-
22. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A process to prepare a haze free base oil having a kinematic viscosity
at 100°C of greater than 10 cSt from a Fischer-Tropsch wax feed comprising
the following steps:

(a) reducing the wax content of a Fischer-Tropsch wax feed by
contacting the feed with a hydroisomerisation catalyst under
Appeal 2011-001980
Application 10/583,758

2
hydroisomerisation conditions at a remote location to form an intermediate
product having a wax content between 10 and 35 wt%;

(b) transporting the intermediate product having the reduced wax
content as obtained in step (a) from the remote location to another location
closer to the end-user; and

(c) solvent dewaxing the transported intermediate product to obtain a
haze free base oil at the location closer to the end-user.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Miller 6,99,385 B2 Mar. 02, 2004
Benard WO 02/099014 A2 Dec. 12, 2002
Bradford WO 2005/044954 A1 May 19, 2005

Appellants’ claimed invention is directed to a process for preparing a
haze free base oil. The process entails reducing the wax content of a
Fischer-Tropsch wax feed with a hydroisomerisation catalyst to form an
intermediate product, transporting the intermediate product to a location
closer to the end-user, and solvent dewaxing the transported intermediate
product. By performing the solvent dewaxing at a location close to the end-
user, the user is able to choose the dewaxing technique most suited for the
specific application.
Appealed claims 1-4, 6-15 and 17-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Benard in view of Miller and Bradford.
Appellants do not present separate arguments for any particular claim
on appeal. Accordingly, all the appealed claims stand or fall together with
claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
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Application 10/583,758

3
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
Appellants do not dispute the Examiner’s factual determination that
the applied prior art evidences that it was known in the art to perform the
claimed steps of reducing the wax content of a Fischer-Tropsch wax feed by
contacting the feed with a hydroisomerisation catalyst to form an
intermediate product, and solvent dewaxing the intermediate product to
obtain a haze free base oil. It is Appellants’ principal argument that the
claimed 2-step dewaxing process, which involves transporting the
intermediate product to a different location before performing the solvent
dewaxing step, is not taught or suggested by the applied prior art.
Appellants contend that Bradford does not teach dewaxing a Fischer-
Tropsch wax feed to render it more transportable. This argument, however,
does not address the thrust of the Examiner’s rejection.
As pointed out by the Examiner, Bradford teaches a process of
transporting a hydrocarbon product by ship from a remote location to one
that is closer to the end-user (p. 1, l. 1 – p. 2, l. 6; p. 7, l. 29-p. 8, l. 21).
Also, Bradford discloses that the hydrocarbon product is a Fischer-Tropsch
product prepared by methods described in patents cited at page 6, lines 13 –
20, which, significantly, are the same references cited by Appellants’
Specification for methods describing making a Fischer-Tropsch feed stock.
In addition, Bradford discloses that “[t]he partly isomerised wax as obtained
in such process steps may advantageously be further processed by means of
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Application 10/583,758

4
dewaxing to obtain lubricating base oils or may be shipped as an
intermediate product to base oil manufacturing locations more near to the
end users” (p. 7, ll. 15-19). Accordingly, based on the Bradford disclosure,
we agree with the Examiner that it would have been obvious for one of
ordinary skill in the art “to apply conventional downstream processing such
as solvent dewaxing as taught by Benard on page 12, lines 27-35” after the
intermediate product has been transported to another location (Ans. 6, third
para.). Moreover, to the extent Appellants’ argument is based upon
discovering the problem of transporting compositions having a higher wax
content, we are convinced that the problem as well its solution would have
been readily apparent to one of ordinary skill in the art. In re Ludwig, 353
F.2d 241, 243-44 (CCPA 1965).
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

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

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