Ex Parte Tran et al

Patent Trial and Appeal Board

Jul 14, 2016

11524815 (P.T.A.B. Jul. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111524,815 09/21/2006 BoL. Tran
49459 7590 07118/2016
NALCO COMPANY
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.
7981 8077
EXAMINER
655 Lone Oak Drive OLADAPO, TAIWO
Eagan, MN 55121
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
07/18/2016 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):
connie.scheff@ecolab.com
sarah.dannecker@ecolab.com
ecolab_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO L. TRAN, JOSEPH M. HAMNIK, and
STEPHEN J. BLUBAUGH 1
Appeal2014-008001
Application 11/524,815
Technology Center 1700
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's maintained rejection of claims 11, 14-16, 18-22, 24, 25, and
27-29 under 35 U.S.C. § 112, first paragraph as lacking written description. 2
We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Appellants identify Nalco Company as the real party in interest. Appeal
Brief filed March 2, 2014 ("App. Br."), 2.
2 Appellants also request a ruling as to prior art previously cited during
prosecution and various petitionable matters. Reply Brief filed July 21,
2014 ("Reply Br."), 13-14.
Appeal2014-008001
Application 11/524,815
Appellants' claimed invention is directed to methods of operating
equipment using a fluid to control force and movement, wherein the fluid
comprises a glycerin-containing by-product. Spec. Abstract, Claims 11, 27,
28. The hydraulic fluid comprises about 40 to about 99 weight percent of
glycerin. Spec. 2, 11. 4-5.
The independent claims require that "the majority of the fluid ... is
the by-product" (claims 11, 27, 28) and that the fluid comprises either "90 to
99 percent glycerin" (claims 11, 27) or "90 to 95 percent glycerin" (claim
28). Independent claims 11 and 27 also require that the by-product
comprises 0.01 to less than 0.5% methanol.
Independent claim 11 reproduced below with emphasis is illustrative:
11. A method of operating equipment in which a fluid is used
to transmit energy to control force and movement in the
equipment, comprising the step of introducing into a hydraulic
system a fluid comprising a glycerin-containing by-product
from a biodiesel manufacturing process or transesterification
reactions involving triglycerides wherein-the majority of the
fluid used to transmit the energy is the by-product and the fluid
used to transmit the energy has a wear characteristic of less than
1 mm scar diameter maximum wherein the fluid comprises 90
to 99 percent glycerin, the by-product further comprises 0.01 to
less than 2%, inorganic salts, 0.01 to less than 0.5% methanol,
and mong.
App. Br. (Claims Appendix) 9.
2
Appeal2014-008001
Application 11/524,815
DISCUSSION3
On the record before us, we are persuaded that the Examiner erred in
finding there is a lack of written description as to the majority of the
hydraulic fluid being by-product, as to the recited amount of glycerin, and as
to the amount of methanol in the by-product.
"It has long been the case that a patentee 'can lawfully claim only
what he has invented and described, and if he claims more his patent is
void."' Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008) (citing O'Reilly v. Morse, 56 U.S. (15 How.) 62,
121 (1853)). To satisfy the written description requirement, "the applicant
must convey with reasonable clarity to those skilled in the art that, as of the
filing date sought, he or she was in possession of the claimed invention."
Carnegie Mellon University, 541 F.3d at 1122 (internal quotations omitted).
Our reviewing court has "repeatedly stated that actual 'possession' or
reduction to practice outside of the specification is not enough. Rather, ...
it is the specification itself that must demonstrate possession." Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (en bane). A "description that merely renders the invention obvious
does not satisfy the requirement." Id. (citing Lockwood v. Am. Airlines, 107
F.3d 1565, 1571-72 (Fed. Cir. 1997)). It is also not enough that the claims
are enabled; "requiring a written description of the invention ... curtail[ s]
claims that do not require undue experimentation to make and use, and thus
3 We refer to the Final Office Action mailed October 1, 2013 ("Final Act."),
the Appeal Brief filed March 2, 2014, the Examiner's Answer mailed May
19, 2014 ("Ans."), and the Reply Brief filed July 21, 2014.
3
Appeal2014-008001
Application 11/524,815
satisfy enablement, but that have not been invented, and thus cannot be
described." Ariad Pharmaceuticals, Inc., 598 F.3d at 1352.
We note that Appellants claiming a narrower range within the broader
range disclosed in the Specification as originally filed does not generally
violate the written description requirement unless, on the facts, the examiner
"has presented sufficient reason to doubt that the broader described range
also describes the somewhat narrower claimed range." In re Wertheim, 541
F .2d 257, 264 (CCP A 197 6). The Examiner can meet the burden"[ w ]here it
is clear, for instance, that the broad described range pertains to a different
invention than the narrower (and subsumed) claimed range, then the broader
range does not describe the narrower range." Wertheim, 541 F.2d at 265.
As to the recited amounts of by-product and glycerin, the Examiner
finds that the Specification does not recite the amount of by-product in the
hydraulic fluid and that the disclosure as to the amount of glycerol in the by-
product is limited to 40 to 90 weight percent. Based on these
determinations, the Examiner finds there is a lack of written description for
the majority of the hydraulic fluid being by-product and the hydraulic fluid
including glycerin at either 90 to 99 weight percent or 90 to 95 weight
percent. Ans. 4-5. The Examiner reasons that where the amount of glycerol
in the by-product is no greater than 90 weight percent, it is impossible to
attain a hydraulic fluid including glycerin at 95 weight percent or greater. In
doing so, the Examiner discounts the disclosure that the hydraulic fluid
comprises about 40 to about 99 weight percent of glycerin as support for
glycerin in the by-product in amounts greater than 90 weight percent
because the Specification does not bar including glycerin in addition to that
contributed by the by-product.
4
Appeal2014-008001
Application 11/524,815
On this record, we find there is sufficient written description for both
the recited amounts of by-product and of glycerin. The Specification
describes preparing hydraulic fluids by "adding any desired functional
additives and optionally diluting [the glycerin by-products] to the desired
glycerin concentration." Spec. 4, 11. 12-14. As the addition of functional
additives and dilution of the glycerin by-products are optional, this
disclosure constitutes sufficient written description of hydraulic fluid where
a majority of the fluid is by-product. As to the amounts of glycerin, the
Specification describes refining the glycerin by-product as necessary prior to
use, including the use of distillation to adjust the glycerin concentration
and/or remove impurities (Spec. 4, 11. 16-18) and that the amount of glycerin
in the hydraulic fluid is "about 40 to about 99 weight percent of glycerin"
(Spec. 2, 11. 4-5).
While the Specification explicitly discloses addition of other
materials, additives, diluents, and various diols, the disclosure of included
glycerin is limited to that arising from the by-product. See generally, Spec.
Critically, we further find that the disclosure that distillation can be used to
adjust the glycerin concentration and/or remove impurities as necessary prior
to use reasonably conveys the process of concentrating and/or purifying the
glycerol present in the by-product to the concentrations necessary to provide
glycerin in the hydraulic fluid in amounts from about 90 to about 99 weight
percent. 4
4 On this record, the Examiner fails to explain or provide any basis for why
distillation to remove impurities would not reasonably convey to those
skilled in the art providing pure glycerol or why such purified glycerol
would not properly be considered a glycerol by-product.
5
Appeal2014-008001
Application 11/524,815
The Examiner finds that the Specification lacks written description for
the by-product including the recited amount of methanol. Ans. 5. The
Examiner finds that while the Specification discloses methyl esters and
methanol in combination present in amounts of about 0.01 to about 5%, the
disclosure is insufficient to support methanol in amounts at the upper limit
of the claimed range----0.5%. Ans. 5, 6-7. Further reasoning that there is no
disclosed ratio of methyl esters to methanol, the Examiner also determines
that there is a lack of sufficient support for methanol at an amount of about
0.01 %. Ans. 6-7.
Appellants argue that because the Specification describes that the by-
product comprises 0.01 % to 5% by weight methanol and methyl esters
(Spec. 4, 11. 6-7) and further describes an embodiment in which the by-
product includes methanol and excludes methyl esters (original claim 16), it
follows that there is sufficient written description for methanol alone in
amounts up to 0.5% (App. Br. 5-7; Reply Br. 9-13). Appellants' position is
grounded on broader ranges reasonably conveying possession of narrower
ranges and on the Specification reasonably conveying inclusion of methanol
in amounts up to at least 0.5%.
On this record, we determine that the Examiner has failed to meet the
burden to establish that there is not sufficient support for the claimed range
of methanol. In particular, the Examiner has failed to establish that the
Specification does not constitute sufficient disclosure of methanol in
amounts of about 0.01 % to greater than 0.5% and has failed to present
sufficient reason to doubt that the disclosed broader range does not also
describe the narrower, claimed range of about 0.01 % to 0.5%. Critically, the
Examiner's position fails to explain why the disclosure that "[ m ]ethyl esters
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Appeal2014-008001
Application 11/524,815
and methanol are typically present in an amount of about 0.01 to about 5
percent" (Spec. 4, 11. 6-7) does not constitute sufficient disclosure of
methanol in amount of about 0.01 to 0.5%, particularly in light of the
disclosed process for forming biodiesel (Spec. 3, 1. 17 to 4, 1. 5). The
Specification sets forth that "the oils and fats can be filtered and
preprocessed to remove water and contaminants ... [and then] be mixed
with an alcohol and a catalyst" (Spec. 3, 11. 17-20) where methanol is set
forth as an exemplary alcohol (Spec. 3, 1. 22) that functions not only as a
reactant, but also as a solvent for the typically-used sodium hydroxide or
potassium hydroxide base catalysts (Spec. 3, 11. 21-22). The Specification
also sets forth that the biodiesel manufacturing process-a catalyzed
transesterification-is only complete when the triglycerides have been
converted to fatty acid alkyl esters and glycerol. Spec. 3, 11. 27-29. The
Specification further discloses that remaining methanol separates to the
glycerin by-product phase. Spec. 3, 11. 30-31; 4, 1. 3.
Under these circumstances, particularly where methanol is disclosed
both as reactant and as solvent for catalysts and as separating to the by-
product phase, we are of the opinion the Examiner has failed to establish that
the Specification as a whole would not have reasonably conveyed possession
of by-product including methanol in amounts of about 0.01 to 0.5%.
For the reasons set forth above, it follows that we cannot sustain the
Examiner's rejection of the claims for lack of compliance with the written
description requirement.
Appellants request that we rule as a matter of res judicata that earlier-
cited prior art does not anticipate the claims nor render them unpatentable
for obviousness. App. Br. 7; Reply Br. 13 (citing MPEP § 707.07(±)).
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Appeal2014-008001
Application 11/524,815
We decline to reach the issue or to offer such an opinion. No claim
currently stands rejected over prior art. Final Act.; Non-Final Office Action
mailed June 4, 2013. It follows that any prior or potential rejection of claims
over prior art is, therefore, not properly before us as appeal is taken from the
decision of the Examiner rejecting the claims. 37 C.F.R. § 41.31 (a), (c). It
further follows, therefore, that no inference should be drawn from our
decision here as to the propriety of any previously pending, but withdrawn,
or future prior art rejection. To the extent Appellants are contesting the
conduct of examination-including any failure to provide reasons why an
earlier prior art rejection was withdrawn-the matter is not before us as the
conduct of examination is a petitionable, not an appealable, matter. 37
C.F.R. § 1.181.
CONCLUSION
The Examiner's rejection of claims 11, 14-16, 18-22, 24, 25, and 27-
29 under 35 U.S.C. § 112, first paragraph is REVERSED.
REVERSED
8