12673044 (P.T.A.B. Jul. 19, 2016)

Ex Parte Germaine et al

Patent Trial and Appeal BoardJul 19, 2016

12673044 (P.T.A.B. Jul. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/673,044 08/22/2011 Gilbert Robert Bernard Germaine 23632 7590 07/21/2016 SHELL OIL COMPANY PO BOX 2463 HOUSTON, TX 77252-2463 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. TS7711USAP 5086 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 07/21/2016 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): USPatents@Shell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GILBERT ROBERT BERNARD GERMAINE and DAVID JOHN WEDLOCK Appeal2015-002612 Application 12/673,044 Technology Center 1700 Before GEORGE C. BEST, A VEL YN M. ROSS, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-10. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. We designate our affirmance of the rejection of claim 10 as a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 1 According to the Appellants, the real party in interest is Shell Oil Company. Appeal Br. 2. Appeal2015-002612 Application 12/673,044 STATEMENT OF THE CASE Appellants describe the present invention as an advantageous high viscosity oil blend. Spec. 2:28-3:2. Claims 8 and 10---reproduced below with emphasis added to claim elements that are at issue in this appeal-are illustrative of the claimed subject matter: 8. A process for the preparation of a lubricant base oil blend, comprising blending a) a mineral oil derived base oil having a saturates content of more than 90 wt%, a sulphur content of less than 0.03 wt% and a viscosity index of between 80-150, and b) a paraffinic base oil component having a viscosity at 100Â°C of from 7 to 30 cSt (7 to 30 mm2/s), wherein component (b) is an isomerised Fischer-Tropsch derived bottoms product having a ratio of percentage of recurring methylene carbons which are four or more carbons removed from an end group and a branch to the percentage of isopropyl carbon atoms, as determined by 13C-NMR, of below 8.2. 10. The process according to claim 8, wherein the paraffinic base oil component (b) is a heavy bottom heavy bottom distillate fraction obtained from a Fischer-Tropsch derived wax or waxy raffinate feed by: (a) hydrocracking/hydroisomerisating a Fischer-Tropsch derived feed, wherein weight ratio of compounds having at least 60 or more carbon atoms and compounds having at least 30 carbon atoms in the Fischer-Tropsch derived feed is at least 0.2 and wherein at least 30 wt% of compounds in the Fischer- Tropsch derived feed have at least 30 carbon atoms; (b) separating the product of step (a) into one or more distillate fraction( s) of lower boiling fractions and a broad range base oil precursor fraction and a heavy fraction such that the T90 wt% boiling point of the base oil precursor fraction is between 350 and 550 Â°C; 2 Appeal2015-002612 Application 12/673,044 ( c) performing a pour point reducing step to the broad range base oil precursor fraction obtained in step (b ); and ( d) isolating the heavy bottom distillate fraction by distilling the product of step ( c ). Appeal Br.2 6---7 (Claims Appendix). REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Miller US 7 ,922,892 B2 Apr. 12, 2011 (hereinafter "Miller '892") Miller US 8,216,448 B2 July 10, 2012 (hereinafter "Miller '448") REJECTIONS The Examiner rejects claims 1-10 under 35 U.S.C. Â§ 103 as unpatentable over Miller '892 or Miller '448. 3 Ans. 2. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, No. 2009-006013, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require 2 In this decision, we refer to the Final Office Action mailed December 30, 2013 ("Final Act."), the Appeal Brief filed August 4, 2014 ("Appeal Br."), and the Examiner's Answer mailed October 22, 2014 ("Ans."). 3 For brevity, citations in this opinion are provided to Miller '892. Miller '448 provides equivalent disclosure with respect to the issues presented in this appeal. 3 Appeal2015-002612 Application 12/673,044 an applicant to identify the alleged error in the examiner's rejections")). Appellants do not separately argue claims 1-9. We therefore focus on claim 8. Claims 1-7 and 9 rise or fall with claim 8. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). We address claim 10 separately. The Examiner rejects all claims as obvious based on Miller '892 and Miller' 448. Final Act. 2. The two Miller references are both related to U.S. Patent No. 7,053,254 ("Miller '254"), which is addressed in the Specification. See, e.g., Spec. 2:6-27; 9:32-10:4; 10:31-11: 13. Appellants argue that the Miller references fail to disclose the recitation of claims 8 wherein "the Fischer-Tropsch derived bottoms product has a ratio of recurring methylene carbons which are four or more carbons removed from an end group and a branch to the percentage of ispropyl carbon atoms, as determined by 13C NMR, of less than 8.2." Appeal Br. 4. For brevity, this opinion refers to this feature as "the determined ratio." The Examiner finds that the determined ratio is "not specifically taught by Miller." Final Act. 3. The Examiner nonetheless concludes that the determined ratio is obvious in view of the Miller references. Id. As explained below, we agree with the Examiner's obviousness conclusion. According to the Specification, the benefit of maintaining a determined ratio of less than 8.2 is that doing so will avoid "a measurable pour point depressing effect." Spec. 11 :9-13; see also Spec. 8: 17-24 (stating that the Fischer-Tropsch derived paraffinic base oil component (b) according to the invention "preferably has no measurable pour point depressing effect on the base oil blend"). The Specification states that the Fischer-Tropsch bottoms product of the present invention differs from those of Miller based upon the invention's 4 Appeal2015-002612 Application 12/673,044 determined ratio being below 8.2 (and thus avoiding the measurable pour point depressing effect): It was found that isomerized Fischer-Tropsch bottoms products as disclosed in US-A-7053254 differ from the Fischer-Tropsch derived paraffinic base oil components according to the present invention, which are usually obtained at a higher dewaxing severity in that the latter compounds have a ratio of percentages epsilon methylene carbon atoms to carbon atoms in isopropyl branches of at or above 8.2, as measured on the Fischer Tropsch base oil as a whole. Spec. 10:29-11:4. Based on this passage, we agree with the Examiner's finding that the Specification teaches that the determined ratio value of 8.2 results from modifying "dewaxing severity." Ans. 5. The Miller references, meanwhile, recognize that "[p ]our point ... is an important property of base oils" and that additives are often necessary to lower the pour point of a base oil. Miller '892 2:9-14. Miller teaches that dewaxing can improve pour point depressing properties of its additive. Ans. 5; Final Act. 4; Miller '8926:61-7:1 (explaining that Fishcer-Tropsch wax is isomerized "[i]n order to improve the pour point"); Miller '892 11 :23-26 ("In the present invention, solvent dewaxing may optionally be used to enhance the pour point depressing properties of the isomerized Fischer- Tropsch derived bottoms"). In view of Miller, a preponderance of the evidence supports that a person of skill in the art would have recognized the importance of being able to modify pour point. A preponderance of the evidence further supports the findings that Miller teaches adjusting the degree of dewaxing in order to modify pour point and that making this modification would have been within the technical grasp of the person of ordinary skill. Ans. 5-7; see also Miller 5 Appeal2015-002612 Application 12/673,044 '892 11:20-36 (explaining how solvent dewaxing can be performed and referencing related patent disclosures); Spec. 24: 10-14 ("By varying the severity of the process conditions as described above a skilled person will easily determine the required operating conditions to arrive at the desired wax conversion."). Because this adjustment would be a product of "ordinary skill and common sense," we agree with the Examiner's conclusion that it would have been obvious underÂ§ 103. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation") (citations omitted); In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result- effective."). As further discussed below in the context of claim 10, the process of Miller and the claimed invention are very similar. Thus, adjusting the degree of dewaxing would reasonably be expected to lead to the recited "ratio of percentage of recurring methylene carbons ... of below 8.2." Ans. 5; Spec. 10:29-11:4. Appellants present no persuasive evidence to the contrary. We therefore agree with the Examiner's conclusion that claim 8 would have been obvious in view of the Miller references. See In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990) ("in Spada's case we conclude that the Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada's polymer latexes for lack of novelty"). We thus sustain the Examiner's rejection of claims 1-9. 6 Appeal2015-002612 Application 12/673,044 With respect to claim 10, Appellants argue that "the Examiner has failed to specifically point out where each of steps (a)- (d) are provided in either or both of the cited Miller references." Ans. 4. Per the recitations of claim 10, the referenced "steps (a)-(d)" are steps for obtaining "a heavy bottom distillate fraction ... from a Fischer-Tropsch derived wax or waxy raffinate feed." The Examiner states that "the isomerized Fischer-Tropsch bottoms may be prepared in the process taught in COLS. 6-7 [of Miller]." Upon reviewing this passage of Miller '892, we find that Miller teaches or suggests the recited steps of claim 10. To further elaborate upon the Examiner's succinct statement, we find that Miller teaches: (1) hydrocracking/hydroisomerisating a Fischer-Tropsch derived feed (Miller '892 6:65-7: 1 ); (2) wherein weight ratio of compounds having at least 60 or more carbon atoms and compounds having at least 30 carbon atoms in the Fischer- Tropsch derived feed is at least 0.2 and wherein at least 30 wt% of compounds in the Fischer-Tropsch derived feed have at least 30 carbon atoms (id. at 7:35-37 (teaching an average molecular weight as high as 1100 which, for the carbon-based molecules at issue with carbon having a molecular weight of 12 and hydrogen having a molecular weight of 1, would be the equivalent of molecules having, on average, more than 60 carbon atoms)); (3) separating the product of step (a) into one or more distillate fraction( s) of lower boiling fractions and a broad range base oil precursor fraction and a heavy fraction such that the T90 wt% boiling point of the base oil precursor fraction is between 350 and 550 Â°C (id. at 7:63-8:25 (noting 7 Appeal2015-002612 Application 12/673,044 that 90 percent point will fall between 725 degrees F and 900 degrees F, i.e., between 385 C and about 482 C)); ( 4) performing a pour point reducing step to the broad range base oil precursor fraction obtained in step (b) (id. at 7: 18-25 (teaching that further pour point reduction is "usually not necessary" and thereby suggesting that such a step is sometimes necessary)); and (5) isolating the heavy bottom distillate fraction by distilling the product of step (c) (id. at 7:63-8:18). Because Appellants have not identified error in the Examiner's rejection of claim 10 based upon Miller, we sustain the Examiner's rejection of claim 10. The elaboration above, however, goes well beyond the Examiner's explanation for the rejection of claim 10. We therefore designate our affirmance of claim 10 as a new ground of rejection under 37 C.F .R. Â§ 41.50(b) in order to provide Appellants with a full and fair opportunity to react to the rejection. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1-10. We designate our affirmance of claim 10 as a new ground of rejection under 37 C.F.R. Â§ 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to 8 Appeal2015-002612 Application 12/673,044 the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED; NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. Â§ 41.50(b) 9