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  • UNITED STATES PATENT AND TRADEMARK OFFICE

    BEFORE THE PATENT TRIAL AND APPEAL BOARD

    NALCO COMPANY Requester and Respondent

    v.

    BAKER HUGHES, INC. Patent Owner and Appellant

    Appeal2014-003628 Reexamination Control95/000,524 and 95/001,399

    Patent 7,497,943 B2 Teclmology Center 3900

    Before CHUNG K. P AK, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges.

    LEBOVITZ, Administrative Patent Judge.

    DECISION ON APPEAL

    This is a decision on the appeal by the Patent Owner from the Patent

    Examiner's decision to reject pending claims 1, 5, 6, 17, 26, and 32 in the above-

    identified inter partes reexamination of US 7,497,943 B2. The Board's

    jurisdiction for this appeal is under 35 U.S.C. §§ 6(b ), 134, and 315. We affirm.

    Case: 15-1895 Document: 1-2 Page: 6 Filed: 08/04/2015 (7 of 93)

  • Appeal2014-003628 Reexamination Control95/000,524 and 95/001,399 Patent 7,497,943 B2

    I. BACKGROUND

    The patent in dispute in this appeal is US 7,497,943 B2 ("the '943 patent")

    which issued March 3, 1999. The named inventors are Tran M. Nguyen, Lawrence

    N. Kremer, and Jerry J. Waters. The Patent Owner is Baker Hughes Inc. ("Patent

    Owner"). Appeal Brief("Appeal Br.") 4 (June 11, 2013).

    Requests for inter partes reexamination of the '943 patent were filed

    December 12,2009 and July 16,2010 under 35 U.S.C. §§ 311-318 and 37 C.P.R.

    §§ 1.902-1.997. Right of Appeal Notice ("RAN") 2 (March 11, 2013). The Third

    Party Requesters are Assateague Oil Inc. and Nalco Company, respectively. !d.

    The inter partes reexaminations were subsequently merged. !d. at 2-3.

    Patent Owner appeals the Examiner's decision to reject claims 1, 5, 6, 17,

    26, and 30-32. Appeal Br. 4. Nalco ("Requester") filed a Respondent Brief

    ("Resp't Br.") on July 11,2013 in response to Patent Owner's Appeal Brief.

    Assateague did not file a respondent brief.

    An oral hearing was held August 6, 2014 with both Patent Owner and

    Requester in attendance. A transcript of the hearing will be entered into the record

    in due course.

    Claim 1 is representative and reads as follows:

    A method of transferring metals and/or amines from a hydrocarbon phase to a water phase in a refinery desalting process consisting of:

    adding to a wash water, an effective amount of a composition to transfer metals and/or amines from a hydrocarbon phase to a water phase comprising at least one water-soluble hydroxyacid selected from the group consisting of glycolic acid, gluconic acid, CTC4 alpha- hydroxy acids, malic acid, lactic acid, poly-hydroxy carboxylic acids, thioglycolic acid, chloroacetic acid, polymeric forms of the above hydroxyacids, poly-glycolic esters, glycolate ethers, and ammonium salt and alkali metal salts of these hydroxyacids, and mixtures thereof,

    2

    Case: 15-1895 Document: 1-2 Page: 7 Filed: 08/04/2015 (8 of 93)

  • Appeal2014-003628 Reexamination Control95/000,524 and 95/001,399 Patent 7,497,943 B2

    lowering the pH of the wash water to 6 or below, before, during and! or after adding the composition;

    adding the wash water to crude oil to create an emulsion; and

    resolving the emulsion into hydrocarbon phase and an aqueous phase using electrostatic coalescence, where at least a portion of the metals and/or amines are transferred to the aqueous phase.

    Claim 26 is also an independent claim. Claims 5, 6, 17, and 30-32 are

    dependent claims.

    The claims stand rejected by the Examiner as follows:

    1. Claims 1, 5, 6, 17, 26, and 30-32 as obvious under 35 U.S.C. § 103(a) in

    view of Reynolds '463 1 and Hart.2

    2. Claim 1, 5, 6, 17, 26, and 30-32 as obvious under 35 U.S.C. § 103(a) in

    view ofReynolds'463 and SU '520.3

    3. Claims 1, 17, 26 and 32 as obvious under 35 U.S.C. § 103(a) in view

    Patent Owner Admissions, 4 and Hickok. 5

    4. Claims 1, 17,26 and 32 as obvious under 35 U.S.C. §103(a) in view of

    Reynolds'463 and Patent Owner Admissions.

    We AFFIRM Rejections 1 and 3 of all the rejected claims 1, 5, 6, 17, 26, and

    30-32. Because we have affirmed the rejections of all the claims which stand

    rejected, we do not reach Rejections 2 and 4.

    1 John Reynolds, US 4,789,463 issued December 6, 1988. 2 Rosalie B. Hart et al., US 5,078,858 issued January 7, 1992. 3 V.Kh. Shaimardanov et al., SU 1,666,520 Al August 8, 1989. 4 Testimony by Jerry Weers, Ph.D., in the Transcript from the Preliminary Injunction Hearing on September 1, 2009. Dr. Weers is one of the named inventors of the '943 patent and is an employee of the Patent Owner. Weers Decl. 1 (dated July 23, 2012). 5 J.E. Hickok et al., US 2,767,123 issued October 16, 1956.

    3

    Case: 15-1895 Document: 1-2 Page: 8 Filed: 08/04/2015 (9 of 93)

  • Appeal2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2

    DESALTING CRUDE OIL

    The claims are drawn to a refinery desalting process for crude oil. In the

    "BACKGROUND OF THE INVENTION" of the '943 patent, it is stated that "the

    desalting of crude oil has been practiced for many years." '943 patent, col. 1, ll.

    21-22. The patent explains that "[ d]esalting is necessary prior to further processing

    [of crude oil] to remove [contaminant salts] and other inorganic materials that

    would otherwise cause fouling and deposits in downstream heat exchanger

    equipment and/or form corrosive salts detrimental to crude oil processing

    equipment." !d. at col. 1, ll. 38-42.

    During the hearing for a preliminary injunction, Dr. Jerry Weers, an inventor

    of the subject matter of the '943 patent, testified about the desalting process:

    A desalting process is the first step in the refinery process. Crude oil comes out of a storage tank, and the desalter is the first unit in the refinery that this crude oil sees.

    This oil comes to the units; it is heated; it is treated with various chemicals to help this process happen. Water is mixed in with the crude oil. It goes through then a mix valve, is the terminology. It's basically like a blender that creates an emulsion out of the oil and water so you get very good contact and very good removal of contaminants into the water phase. This mixture then goes into a big vessel where you have an electric grid.

    Weers Transcript 37:13-25.

    Q. What are the parts of the standard desalting process that everybody performs?

    A. Well, crude oil will come from the storage tanks in the refinery .... [After heating, it is] then blended with water from some source in the refinery. It goes through a mix valve; so, you make the emulsion out of the water and oil. It gives you a very good dispersion so you get good contact of the different materials. And then it goes into a vessel

    4

    Case: 15-1895 Document: 1-2 Page: 9 Filed: 08/04/2015 (10 of 93)

  • Appeal2014-003628 Reexamination Control95/000,524 and 95/001,399 Patent 7,497,943 B2

    that has the grids and the electric field as part of the technology that's used to separate again the water and oil once they've been mixed.

    Id. at 40: 1-16

    A. In every desalter that I've ever seen there's always a demulsifier; there's always heating going on; there's always a mix valve to create the oil/water emulsions that basically give you the good contact of the oil and water phases; there is always an electrostatic field in these, electric grid. The electricity and the electric field helps that water and oil break again.

    !d. at 70:16-22.

    Q. Now, adding an acid to the wash water was known prior to filing your patent, right?

    A. Adding different acids, yes. I mean, addition of an acid to change pH is a known process.

    !d. at 123:19-23.

    Thus, Dr. Weers acknowledged that the prior art desalting process involves

    mixing water with crude oil in a desalter to make an emulsion, and then resolving

    the emulsion into water and oil using an electrostatic grid.

    REJECTION 3. PATENT OWNER ADMISSIONS AND HICKOK

    With respect to claim 1, the Examiner found that the "only limitation

    missing from the Patent Owner Admissions [in the Weers Declaration] is the

    specific hydroxyl-carboxylic acid [the latter term is used by the Examiner

    interchangeably with "hydroxyacid," the term recited in the claims] required to

    chelate the metal ions in the crude oil." RAN 14. However, the Examiner found

    that "Hickok discloses the extraction of metal ions from gasoline (hydrocarbon

    phase) using a 5% to 1 0% by volume amount of a wash water containing a

    hydroxycarboxylic acid (glycolic acid, malic acid, or lactic acid at 2:64-72). See

    [Hickok], column 5, lines 38-42." !d.

    5

    Case: 15-1895 Document: 1-2 Page: 10 Filed: 08/04/2015 (11 of 93)

  • Appeal2014-003628 Reexamination Control 95/000,524 and 95/001,399 Patent 7,497,943 B2

    The Examiner concluded that it would have been obvious to one of ordinary

    skill in the art "to have modified the teachings of Patent Owner Admissions by

    adding a water-soluble hydroxyacid such as lactic acid to the wash water at a pH of

    6 or below to the wash water as taught by Hickok in the standard crude oil

    desalting process as taught in th