Ex Parte Bhan et al

Board of Patent Appeals and Interferences

Jun 6, 2012

11014272 (B.P.A.I. Jun. 6, 2012)

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.
11/014,272 12/16/2004 Opinder Kishan Bhan TH2815 (US) 1617
23632 7590 06/07/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
06/07/2012 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 SHELL OIL COMPANY
____________________

Appeal 2010-009200
Application 11/014,272
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, CHUNG K. PAK and
TERRY J. OWENS, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
The Shell Oil Company (Applicant) appeals an Examiner’s decision
rejecting Claims 1-21 and 26-30. 35 U.S.C. §§ 6(b) and 134(a). We reverse.
The Claimed Subject Matter
The claimed subject matter is directed to a method for catalytically treating
crude oil to obtain an oil product having decreased alkaline and alkaline earth
metals. The process has two steps: (1) contacting the oil with a fixed bed catalyst
and (2) controlling the catalyst contacting conditions to maintain a “liquid hourly
space velocity” (LHSV) of the crude feed of greater than 10 h-1 to obtain a
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Application 11/014,272

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reduction in the amount of alkali and alkaline earth metals present in the metal
salts of organic acids of no more than 90% of the amount present in the crude.1
Compared to an LHSV of 1 h-1, an LHSV of greater than 10 h-1 but
producing treated oil having similar properties is said to provide the advantage of
allow[ing] the contacting process to be performed in vessels of
reduced size relative to commercially available vessels. A
smaller vessel size may allow the treatment of disadvantaged
crudes to be performed at production sites that have size
constraints (for example, offshore facilities).
Written Description, 52.
Exemplary Claim 1 is reproduced below:
1. A method of producing a crude product, comprising:

contacting a crude feed with one or more catalysts in a
fixed bed to produce a total product that includes the crude
product,

wherein the crude product is a liquid mixture at 25ºC and
0.101 MPa,

the crude feed comprising one or more alkali metal salts
of one or more organic acids, one or more alkaline-earth metal
salts of one or more organic acids, or mixtures thereof,

1 LHSV represents a measure of the flow of the crude oil through the fixed bed
catalyst relative to the total volume of the catalyst. Applicant defines it as follows:
“‘LHSV’ refers to a volumetric liquid feed rate per total volume of catalyst, and is
expressed in [reciprocal] hours (h -1).” Written Description, 23. Thus, 2 liters per
hour of oil passing through a fixed bed catalyst having a total catalyst volume of
0.5 liters would give a LHSV of 4 h-1.. Doubling the rate of flow or halving the
volume of catalyst without changing the other results in a doubling of LHSV.
Thus, for processes resulting in essentially identical outputs, the LHSV is
representative of the efficiency of the catalytic process.
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Application 11/014,272

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the crude feed having, per gram of crude feed, a total
content of alkali metal, and alkaline-earth metal, in metal salts
of organic acids of at least 0.00001 grams, and at least one of
the catalysts having, per gram of catalyst, at least 0.001 grams
of:

one or more metals from Column 6 of the Periodic Table,
one or more compounds of one or more metals from
Column 6 of the Periodic Table, calculated as weight of
metal, or mixtures thereof; and

controlling contacting conditions such that a liquid
hourly space velocity of crude feed per total volume of catalyst
in a contacting zone is over 10 h-1, and the crude product has a
total content of alkali metal, and alkaline-earth metal, in metal
salts of organic acids of at most 90% of the content of alkali
metal, and alkaline-earth metal, in metal salts of organic acids
in the crude feed,

wherein content of alkali metal, and alkaline-earth metal,
in metal salts of organic acids is as determined by ASTM
Method D1318.
Brief, 12 (Claims Appendix) (paragraphing and italics added).
The rejection
The Examiner rejected all claims under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Bearden2 and Grande.3 The Examiner also cited
and relied on Rankel4 as evidence to support a finding that routine optimization of
the catalyst contact conditions would have led to using an LHSV of greater than 10
h-1. Therefore, controlling the contacting conditions so that the LHSV was greater
than 10 h-1 would have been obvious. Answer, 4.

2 US Patent 5,914,030, issued Jun. 22, 1999.
3 US Patent 6,063,266, issued May 16, 2000.
4 US Patent 4,414,102, issued Nov. 08, 1983.
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Application 11/014,272

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Rankel
Rankle is directed to a process for reducing the nitrogen and oxygen content
of crude oil by converting the nitrogen and oxygen to sulfur containing
components. Rankel, 1:12-16. The process may use a fixed bed catalyst. Rankel
7:31-43 and 5:37-47. Rankel teaches
When employing the fresh multimetal catalyst in this process a
space velocity (WHSV) of about 0.1 to about 50, preferably
about 5 to about 30, is employed. With the deactivated, metals
contaminated hydrodesulfurization catalyst, the space velocity
must be substantially decreased to about 0.1 to 10.0, preferably
about 1 to about 5.
Rankel, 7:20-26.
Applicant’s Position
Applicant argues that using an LHSV of greater than 10 h-1 was not mere
optimization and would not have been obvious. Brief, 9. Applicant points out that
the ranges of 0.1 -50 h-1 reported by Rankel at column 7, lines 20-26 refers to the
hydrogenating and sulfurizing gas feeds not to the oil feed. Applicant further
argues that there is no correlation between the space velocity of the gas feed and
space velocity of the oil feed. Brief, 10.
Analysis
Relying on the above-quoted passage from Rankel, the examiner found that
Rankel discloses use of a fixed bed reactor with LHSV of about
0.1 to about 50[h-1] (See column 7, lines 20-23). Rankel also
discloses that with deactivated catalyst the LHSV should be in a
range of about 0.1 to 10 hr-1, preferably about 1 to 5 hr-1 (See
column 7, lines 24-27).
Answer, 15.
The Examiner’s finding is not supported by a preponderance of the
evidence. First, we note that Rankel refers to WHSV, not LHSV as recited in the
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Application 11/014,272

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claims. The two are different. WHSV is the weight hourly space velocity--the
ratio of the weight per hour of feed to the total weight of catalyst, while LHSV is
the ratio of the volume per hour of feed to the total volume of catalyst. That they
are different measures is also apparent from Rankel’s Table 2. The Table is said to
show the operating conditions for Rankel’s examples. Rankel, 8: 66-67. Table 2
indicates that the WHSV of the examples was 2.4 while the LHSV values for those
same examples were 0.6 or 0.5. Rankel, 9:8-9. The Examiner apparently assumed
that WHSV and LSHV are the same. On this record, a preponderance of the
evidence does not support the Examiner’s assumption.
We also agree with Applicant that the space velocity of 0.1-50 h-1 taught by
Rankel is a reference to the flow of the hydrogenating and sulfurizing gases, not to
the oil feed. Rankel’s reference to the space velocity of 0.1 - 50 immediately
follows the discussion of the sulfide and hydrogen feed rates. Taken in context we
find that Rankel’s statement that “a space velocity (WHSV) of about 0.1 to about
50, preferably about 5 to about 30, is employed” relates to the hydrogen and
sulfide gas feeds not to the oil feed.
Rankel does not provide a teaching of using LHSV for the oil feed of 0 .1-50
h-1.
In reaching the decision the claims were obvious, the Examiner found that
LHSV was a result effective variable in fixed bed catalytic processes of the type
claimed. We do not see error in this general finding. Grande teaches that the
LHSV may be varied between 0.5 – 5.0 h-1. Grande, 2:3-6.5 However, we have
not been directed to adequate evidence or provided reasoning that routine
experimentation would reasonably have been expected to lead to an optimized

5 “The oil flow through the catalyst is preferably 0.5 to 5.0 m3 oil per m3 catalyst
per hour, most preferred 1.0 to 3.0 m3 oil per m3 catalyst per hour”.
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Application 11/014,272

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LHSV of greater than 10 h-1 or that would otherwise have lead the person of
ordinary skill in the art to use an LHSV for the oil feed of greater than 10 h-1. The
claimed minimum value is substantially higher than any LHSV value described in
the relied upon prior art. See Grande, 2:3-6 and Rankel 9:8-9.
On the record and arguments before us, the Examiner has not established
that the subject matter of Claims 1-21 and 26-30 would have been obvious.
DECISION
The Examiner’s decision rejecting the subject matter of Claims 1-21
and 26-30 under 35 U.S.C. § 103(a) is reversed.
REVERSED

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