11351024 (B.P.A.I. Feb. 28, 2012)

Ex Parte Morton et al

Board of Patent Appeals and InterferencesFeb 28, 2012

11351024 (B.P.A.I. Feb. 28, 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. 11/351,024 02/09/2006 Colin Morton 2005M002 2188 25553 7590 02/28/2012 INFINEUM USA L.P. P.O. BOX 710 LINDEN, NJ 07036 EXAMINER HINES, LATOSHA D ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 02/28/2012 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 COLIN MORTON, ROBERT D. TACK, PHILIP D. ARMITAGE, CARLO S. FAVA, and VIRAL B. PATEL ____________ Appeal 2011-000661 Application 11/351,024 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants claim a fuel oil composition comprising a fuel oil having certain characteristics and an additive comprising an ethylene polymer having certain units (claim 1). According to Appellants' Specification, the Appeal 2011-000661 Application 11/351,024 2 fuel oil of their invention is susceptible to wax formation at low temperatures (Spec. 1), and the additive of their invention is for improving the low temperature properties of the oil (id. at 4). Further details regarding the claimed composition are set forth in representative claim 1, the sole independent claim on appeal, which is appended to this opinion. The references listed below are relied upon by the Examiner in the rejections before us: Davies et al. 6,143,044 Nov. 7, 2000 Krull et al. US 2004/0010072 A1 Jan. 15, 2004 The Examiner rejects claims 1-3, 5-9, 11, and 12 under 35 U.S.C. Â§ 102(b) as anticipated by Davies. Under 35 U.S.C. Â§ 103(a), the Examiner rejects claim 4 as unpatentable over Davies and rejects claim 10 as unpatentable over Davies in view of Krull. Appellants' arguments regarding the dependent claims are merely reiterations of the arguments regarding independent claim 1 except that a separate, additional argument is made for dependent claim 6. Therefore, we focus on the Â§ 102 rejection of claims 1 and 6 in our disposition of this appeal. The Examiner finds that Davies discloses a fuel oil composition comprising fuel oil of the type defined by claim 1 (Ans. 3-5) such as a middle distillate fuel oil in admixture with a vegetable-based fuel oil (col. 6, ll. 19-35) of the type defined by claim 2 (Ans. 5). In addition, the Examiner finds that the fuel oil composition of Davies includes a flow improver Appeal 2011-000661 Application 11/351,024 3 additive comprising an ethylene terpolymer with units, for example, in accordance with formula II (col. 2, ll. 26-67) which satisfies the claim 1 additive with units of formula (I) (Ans. 3-5). Appellants argue that Davies does not disclose or teach fuel oils having the characteristics required by claim 1 (App. Br. (filed April 12, 2010) 4; Subst. Br. (filed August 31, 2010)1 4). According to Appellants, the fuel oils of Davies have high wax contents and "fall outside the scope of the present invention" (App. Br. 4; see also Subst. Br. 4). Contrary to Appellants' above inference, the fact that Davies' fuel oils have a high wax content does not distinguish claim 1 from Davies. Both Davies and Appellants are concerned with "fuel oil compositions susceptible to wax formation at low temperatures" (Davies col. 1, ll. 5-6; Spec. 1:4-5). Furthermore, although the fuel oils of Davies are not explicitly disclosed as having the characteristics and properties recited in claim 1, it is reasonable to believe that these fuel oils inherently possess such characteristics and properties. Appellants do not dispute the Examiner's above finding that the specific fuel oil compositions claimed by Appellants (see claim 2) and disclosed by Davies (see col. 6, ll. 19-35) include a middle distillate fuel oil in admixture with a vegetable-based fuel oil. This uncontested finding reasonably supports the belief that Davies' middle distillate/vegetable-based fuel oil possesses the same characteristics and properties as Appellants' apparently identical fuel oil. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("discovery of a new property or use of a 1 For purposes of this appeal, we treat the Substitute Brief filed August 31, 2010 in response to the Examiner's Answer as a Reply Brief. Appeal 2011-000661 Application 11/351,024 4 previously known composition . . . can not impart patentability to claims to the known composition") and In re Best, 562 F.2d 1252, 1255 (CCPA 1970) (where claimed and prior art products are identical or substantially identical, "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"). Appellants also argue that "Formula I in Davies is clearly different from Formula I in claim 1" (App. Br. 5). However, this argument is not relevant to, and therefore, reveals no error in, the Examiner's above finding that formula I of claim 1 is satisfied by formula II of Davies. Finally, Appellants argue that Davies' additive explicitly requires a straight chain alkyl group rather than the branched chain alkyl group recited in claim 6 (App. Br. 5; Subst. Br. 5). Appellants' argument is unpersuasive because it is apparently based on Davies' additive according to formula II wherein R4 represents a straight chain alkyl group. However, the Examiner's rejection of claim 6 relies on Davies' additive according to formula IV wherein R5 represents a hydro- carbyl group having 3 or more carbon atoms such as an aliphatic group (Ans. 5, 13-14). An artisan would immediately envisage an aliphatic group as encompassing both straight chain as well as branched chain embodiments which is consistent with the Examiner's express finding that "Davies teaches straight and branched hydrocarbons [for R5]" (id. at 14). Significantly, Appellants do not specifically contest this express finding in the record before us. For the above stated reasons, we sustain the Examiner's above Â§ 102 and Â§ 103 rejections of claims 1-12. The decision of the Examiner is affirmed. Appeal 2011-000661 Application 11/351,024 5 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). AFFIRMED Appeal 2011-000661 Application 11/351,024 6 Claim 1: Appeal 2011-000661 Application 11/351,024 7 cam