Ex Parte ROY-AUBERGER et al

Patent Trial and Appeal Board

Sep 17, 2018

14553007 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/553,007 11/25/2014 Magalie ROY-AUBERGER
23599 7590 09/19/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PET-2978 2879
EXAMINER
MCCAIG, BRIAN A
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAGALIE ROY-AUBERGER, EMMANUELLE GUILLON, and
PHILIPPE ROCHER
Appeal2018-000070
Application 14/553,007
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
JANEE. 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 1-16. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the applicant, IFP Energies nouvelles, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed April 21, 201 7
("App. Br."), 1.
2 Although the Final Office Action entered November 25, 2016 ("Final
Act.") indicates that claims 1-15 are pending in the present application and
stand rejected under 35 U.S.C. § 103 (Final Act. 1-2), claim 16 was added
after the Final Office Action, so that claims 1-16 are currently pending in
the application. See Amendment filed January 25, 2017. The Examiner's
Answer entered July 31, 2017 ("Ans.") correctly indicates that claims 1-16
are rejected under 35 U.S.C. § 103 (Ans. 3).
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Application 14/553,007
STATEMENT OF THE CASE
Appellant claims a process for the hydrotreatment of a hydrocarbon
feed containing nitrogen-containing compounds in an amount of more than
150 ppm by weight, and having a sulphur content of 0.01 to 5% by weight.
App. Br. 2--4. Claim 1 illustrates the subject matter on appeal and is
reproduced below with contested language italicized:
1. A process for the hydrotreatment of a hydrocarbon feed
containing nitrogen-containing compounds in an amount of
more than 150 ppm by weight, having a sulphur content of
0.01 to 5% by weight and having a weighted average
temperature in the range 250°C to 380°C, comprising the
following steps:
a) bringing said hydrocarbon feed into contact, in the
presence of hydrogen, with at least one first catalyst
comprising an alumina support, phosphorus, and an
active phase formed by at least one metal from group
VIB in the oxide form and at least one metal from group
VIII in the oxide form, said first catalyst being prepared
in accordance with a process comprising at least one
calcining step, to obtain an effluent;
b) bringing at least part of the effluent obtained from
step a) into contact, in the presence of hydrogen, with at
least one second catalyst comprising an alumina support,
phosphorus, an active phase formed by at least one metal
from group VIB and at least one metal from group VIII,
and at least one organic compound containing oxygen
and/or nitrogen, said second catalyst being prepared in
accordance with a process comprising the following
steps:
i) bringing at least one component of a metal
from group VIB, at least one component of a metal
from group VIII, phosphorus and at least one
organic compound containing oxygen and/or
nitrogen into contact with the support, so as to
obtain a catalyst precursor;
ii) drying said catalyst precursor obtained from
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Application 14/553,007
step i) at a temperature of less than 200°C, without
subsequent calcining;
in order to obtain a hydrotreated effluent;
wherein the catalyst of step a) in oxide form is more
active in hydrodenitrogenation than the catalyst of step b) and
wherein the catalyst of step b) is an active
hydrodesulphurization catalyst.
App. Br. 15 ( Claims Appendix) ( emphasis added).
Appellant requests our review of the Examiner's rejection of claims
1-16 under 35 U.S.C. § 103 as unpatentable over Bertram (US 6,235,190 Bl,
issued May 22, 2001) in view of Guichard (FR 2972648 Al, published
September 21, 2012) 3 as evidence by Simpson et al. (US 5,389,595, issued
February 14, 1995).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's timely contentions, 4 we affirm the Examiner's rejection
of claims 1-16 under 35 U.S.C. § 103 for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue Appellant
identifies. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
3 Appellant does not contest the Examiner's reliance on US 2014/0076780
Al as an English equivalent of FR 2972648 Al. Accordingly, citations to
Guichard in this Decision refer to the published U.S. patent application.
4 We do not consider any new argument Appellant raises in the Reply Brief
that Appellant could have raised in the Appeal Brief. 37 C.F.R.
§ 4I.37(c)(l)(iv); 37 C.F.R. § 41.4I(b)(2) (arguments raised for the first
time in the Reply Brief that could have been raised in the Appeal Brief will
not be considered by the Board unless good cause is shown).
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Application 14/553,007
107 5 (BP AI 2010) (precedential), cited with approval in In re Jung, 63 7
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections").
Appellant argues claims 1-16 as a group on the basis of limitations
common to independent claims 1 and 16. App. Br. 4--14. Therefore, we
select claim 1 as representative, and decide the appeal as to claims 1-16
based on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Bertram discloses a hydrotreatment process for removing sulfur and
nitrogen from a hydrocarbonaceous feedstock that involves passing the
feedstock sequentially through two hydrotreating catalysts having different
relative activities. Abstract; col. 1, 11. 15-22; col. 4, 1. 58---col. 5, 1. 22; col. 6,
11. 55----67. Bertram discloses that the second catalyst has a higher
hydrotreating activity than the first catalyst, and Bertram defines
"hydrotreating" activity as activity in reducing the sulfur and nitrogen
content of a feed. Col. 6, 1. 55---col. 7, 1. 12.
Bertram discloses that the hydrotreating catalysts used in the process
described in the reference comprise an alumina support, a phosphorous
promoter, a Group VIB metal such as molybdenum in oxide form, and a
Group VIII metal such as nickel in oxide form, and can be produced as
described in Simpson. Col. 7, 11. 38--40, 47-55; col. 8, 11. 10-16. Simpson
discloses a process including multiple calcining steps for producing a nickel
oxide-mo 1 ybdenum oxide-phosphorous-alumina-containing catalyst
effective for simultaneous hydrodenitrogenation and hydrodesulfurization of
hydrocarbon oils. Col. 2, 11. 64----66; col. 3, 11. 10-13, 22-27; 33----60; col. 7,
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Application 14/553,007
11. 26-30; col. 10, 11. 23-29.
The Examiner finds that Bertram does not disclose that the second
hydrotreating catalyst used in the hydrotreatment process described in the
reference is formed with an organic compound containing oxygen and/or
nitrogen, and the Examiner relies on Guichard for suggesting this feature.
Final Act. 5---6.
Guichard discloses a hydrotreatment catalyst for eliminating sulphur-
containing and nitrogen-containing compounds from a hydrocarbon feed that
comprises an alumina support, phosphorous, a group VIB element such as
molybdenum, a group VIII element such as nickel, a C 1---C4 dialkyl
succinate, and citric acid. ,r,r 2, 16, 17, 75, 77, 78, 81, 139
Guichard discloses producing the catalyst by impregnating an alumina
support with a solution containing the group VIB element, the group VIII
element, and phosphorous to obtain a catalytic precursor, drying the catalytic
precursor at a temperature below 180QC to obtain a dried catalytic precursor,
impregnating the dried catalytic precursor with a solution comprising a C 1-
C4 dialkyl succinate, and citric acid, and drying the impregnated precursor at
a temperature of less than 200QC without a subsequent calcining step to
produce the catalyst. ,r,r 45-50, 100-125. Guichard discloses that such
catalysts including an alumina support, phosphorous, a group VIB element, a
group VIII element, a C 1---C4 dialkyl succinate, and citric acid, exhibit a
large gain in catalytic activity relative to catalysts that include only an
alumina support, phosphorous, a group VIB element, and a group VIII
element. ,r,r 144--174, Table 1.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of Appellant's invention to modify the
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hydrotreating process disclosed in Bertram by substituting the
hydrotreatment catalyst disclosed in Guichard for the second hydrotreating
catalyst utilized in Bertram's process because Guichard's catalyst has a
much higher activity than catalysts similar to the hydrotreating catalysts
disclosed in Bertram, and Bertram indicates that the second hydrotreating
catalyst should have higher hydrotreating activity than the first catalyst used
in Bertram's process. Final Act. 6; Ans. 11, 13. The Examiner further
determines that because "the two catalysts of modified Bertram are similar
to those of the instant application," and are "made in similar way( s ), it is
expected, absent evidence to the contrary, that the catalysts are
hydrodenitrogenation and hydrodesulfurization catalysts, respectively, with
the catalyst of Guichard [] being less active for hydrodenitrogenation than
the first catalyst of Bertram." Ans. 11, 14--15.
Appellant argues that a second hydrotreating catalyst having a higher
hydrotreating activity (which includes denitrogenation) than a first
hydrotreating catalyst is the primary "characterizing" and "important"
feature of Bertram's invention, and Appellant asserts that one of ordinary
skill in the art would not have applied the teachings of Guichard to
Bertram's process in a way that would contradict this primary important
feature of Bertram's invention. App. Br. 8. Appellant contends that
Bertram "provides no teachings about using different catalyst preparation
methods for the catalysts in its two hydrotreating steps," and "Guichard
provides no teachings about a process with two hydrotreating steps, thus,
provides no reason to use different catalyst preparation methods for two
different hydrotreating steps." App. Br. 13. Appellant contends that
"[ w ]hile Guichard may teach a catalyst with an additive organic compound
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containing oxygen, it fails to provide any suggestion to a method wherein
such a catalyst is used in the second of two hydrotreating stages and a
distinct catalyst is used in the first of two hydrotreating stages." App. Br.
10. Appellant argues that "[ c ]learly then the references' teachings as a
whole could not suggest arriving at the two distinct processes for preparing
the catalysts in the specific first and second steps of the claimed invention."
Id. at 13.
However, one of ordinary skill in the art would have understood that
modifying the hydrotreatment process disclosed in Bertram by substituting
the hydrotreatment catalyst disclosed in Guichard for the second
hydrotreating catalyst utilized in Bertram's process as proposed by the
Examiner would not have contradicted the "characterizing" feature of
Bertram's invention of using a second hydrotreating catalyst having a higher
hydrotreating activity than a first hydrotreating catalyst. Rather, as the
Examiner correctly determines, the proposed substitution would actually
further this purpose-and thus would have provided one of ordinary skill in
the art with a reason to make the substitution-in view of Guichard' s
disclosure ( discussed above) that catalysts according to Guichard' s invention
including an alumina support, phosphorous, a group VIB element, a group
VIII element, a C 1---C4 dialkyl succinate, and citric acid, exhibit a large gain
in catalytic activity relative to catalysts that include only an alumina support,
phosphorous, a group VIB element, and a group VIII element, which are
similar to the hydrotreatment catalysts disclosed in Bertram. ,r,r 144--17 4,
Table 1.
Accordingly, although Guichard may not disclose a hydrotreatment
process having two hydrotreating steps, one of ordinary skill in the art
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nonetheless would have been led to utilize the hydrotreating catalyst
disclosed in Guichard as the second catalyst in the hydrotreatment process
disclosed in Bertram due to the higher catalytic activity of Guichard's
catalyst relative to catalysts similar to those disclosed in Bertram, regardless
of whether Bertram explicitly teaches using different catalyst preparation
methods for the two catalysts used in Bertram's process.
Appellant argues that the method disclosed in Bertram is "distinct
from the claimed method" because "Bertram teaches and suggests nothing
about a catalyst with an additive of an organic compound containing oxygen
and/or nitrogen," and Bertram does not teach or suggest that the first
catalyst includes metal components in oxide form, the first catalyst is more
active in hydrodenitrogenation than the second catalyst, the second catalyst
is an additive-containing catalyst that includes an organic compound
containing oxygen and/or nitrogen, the second catalyst is an active
hydrodesulphurization catalyst, and the first catalyst is prepared with a final
calcining step while the second catalyst is prepared without a calcining step
after the inclusion of the additive organic compound containing oxygen
and/or nitrogen. App. Br. 6-7. Appellant contends that a combination of
Bertram and Guichard therefore fails to teach or suggest using catalysts in
which the first catalyst has metal components in oxide form, while the
second catalyst does not, the second catalyst is an additive-containing
catalyst prepared with an organic compound containing oxygen and/or
nitrogen, while the first catalyst is not so-treated, and the first catalyst is
prepared with a final calcining step while the second catalyst is prepared
without a calcining step after the inclusion of the additive organic compound
containing oxygen and/or nitrogen. App. Br. 9-10.
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However, contrary to Appellant's arguments, substituting the catalyst
disclosed in Guichard for the second hydrotreating catalyst utilized in
Bertram's process would result in first and second hydrotreating catalysts
corresponding to the catalysts of steps a) and b ), respectively, recited in
claim 1. Specifically, as discussed above, Bertram discloses that the
hydrotreating catalyst used in the process described in the reference
comprises an alumina support, a phosphorous promoter, a Group VIB metal
such as molybdenum in oxide form, and a Group VIII metal such as nickel
in oxide form, and can be produced using a process includes multiple
calcining steps, corresponding to the catalyst of step a) recited in claim 1.
As also discussed above, the hydrotreatment catalyst disclosed in Guichard
is a hydrodesulphurization and hydrodenitrogenation catalyst (i1139) and
comprises an alumina support, phosphorous, a group VIB element such as
molybdenum, a group VIII element such as nickel, a Cl---C4 dialkyl
succinate, and citric acid. We find no disclosure in Guichard indicating that
the group VIB and group VIII elements are in oxide form, and Appellant
does not direct us to any such disclosure. As also discussed above, Guichard
discloses producing the catalyst in a process that involves a final drying step
at a temperature of less than 200QC without a subsequent calcining step.
Consequently, substituting the catalyst disclosed in Guichard for the
second hydrotreating catalyst utilized in Bertram's process as proposed by
the Examiner would result in a modified process that utilizes a first
hydrotreatment catalyst corresponding to the catalyst of step a) of claim 1
and a second hydrotreatment catalyst corresponding to the catalyst of step b)
of claim 1. Because the first and second catalysts of this modified process
appear to be the same as, or substantially similar to, the catalysts of steps a)
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and b) of claim 1, respectively, and appear to be produced according to the
same process steps recited in claim 1, the Examiner has a reasonable basis
for finding that the first hydrotreating catalyst of Bertram's modified process
would be more active for hydrodenitrogenation than the second catalyst of
Bertram's modified process (the catalyst disclosed in Guichard). Therefore,
the burden shifts to Appellant to show otherwise. In re Best, 562 F.2d 1252,
1255 (CCP A 1977) ( citations omitted) (Where ... the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is based on
'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35
U.S.C. § 103,jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products.); In re Spada, 911 F.2d 705, 709
(Fed. Cir. 1990) ( explaining that a chemical composition and its properties
are inseparable.).
On this record, Appellant does not meet this burden because
Appellant does not provide any evidence or reasoning establishing an
unobvious difference between the first and second catalysts of Bertram's
modified process and the catalysts of steps a) and b) of claim 1, respectively.
App. Br. 4--13.
Appellant argues that one of ordinary skill in the art would have
understood Bertram to implicitly teach, or at least suggest, that the second
hydrotreating catalyst used in Bertram's process is more active for
hydrodenitrogenation than the first catalyst, because the primary function of
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hydrotreating activity is removal of nitrogen and sulfur. App. Br. 7.
Appellant contends that neither Bertram nor Guichard would have suggested
a method for hydrotreatment having two separate hydrotreatment steps in
which the catalyst used in the first step is more active in
hydrodenitrogenation activity than the catalyst used in the second step, and
"Bertram is directly opposed to such a suggestion." App. Br. 9. Appellant
asserts that the teachings of Bertram and Guichard would have suggested
"the opposite of the claimed invention, i.e., not to use the more hydrotreating
active catalyst in the first step but rather to use such a catalyst in the second
step of the process." Id. Appellant further argues that "even if one were to
modify Bertram by using a catalyst of Guichard, one would still not have
any expectation or reason to use a catalyst in the first step which has a higher
denitrogenation activity than the catalyst in the second step" because the
"reference teachings are clearly to the contrary of such an expectation or
result." App. Br. 12-13; Reply Br. 2-3, 5.
However, as discussed above, because the first and second catalysts of
Bertram's process modified by substituting the catalyst disclosed in
Guichard for the second hydrotreating catalyst utilized in Bertram's process
appear to be the same as, or substantially similar to, the catalysts of steps a)
and b) of claim 1, respectively, and appear to be produced according to the
same process steps recited in claim 1, the Examiner has a reasonable basis
for finding that the first hydrotreating catalyst utilized in Bertram's modified
process (Bertram's first hydrotreating catalyst) would be more active for
hydrodenitrogenation than the second catalyst of Bertram's modified process
(the catalyst disclosed in Guichard). Therefore, the burden properly shifts to
Appellant to show otherwise, and as discussed above, Appellant does not
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meet this burden. Best, 562 F.2d at 1255.
Accordingly, Appellant's arguments are unpersuasive of reversible
error in the Examiner's rejection of claims 1-16 under 35 U.S.C. § 103 as
unpatentable over Bertram in view of Guichard as evidenced by Simpson,
and we therefore sustain this rejection.
DECISION
We affirm the Examiner's rejection of claims 1-16 under 35 U.S.C. §
103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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