Ex Parte 6703355 et al

Board of Patent Appeals and Interferences

Jun 16, 2009

90007712 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EXXONMOBIL RESEARCH & ENGINEERING CO.
and
EADS AIRBUS SA,
Patent Owners and Appellants
____________

Appeal 2008-005775
Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2
Technology Center 3900
____________

Decided:1 June 16, 2009
____________

Before CAROL A. SPIEGEL, ROMULO H. DELMENDO, and MICHAEL
P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
ExxonMobil Research & Engineering Co. and EADS Airbus SA
(Appellants and Patent Owners) timely filed a Request for Rehearing
(hereinafter “Request”) of our Decision on Appeal of January 15, 2009

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Patent 6,703,355 B2

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(hereinafter “original Decision”), affirming the Examiner’s final rejection of
claims 1-20 but designating it as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). See 37 C.F.R. § 41.52.
We DENY Appellants’ request to modify our original Decision.

STATEMENT OF THE CASE
In our original Decision, we affirmed the Examiner’s decision to
reject claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over United
States Patent 5,464,551 issued to Deetman on November 7, 1995 (original
Decision 3-13). Nevertheless, we designated our affirmance as a new
ground of rejection to preserve Appellants’ procedural safeguards pursuant
to 37 C.F.R. § 41.50(b) (id. at 2 and 12-13).
Claim 1, which is illustrative of the claimed subject matter, reads as
follows:
1. A method for operating and lubricating aircraft
hydraulic systems at pressure of about 4000 psi and exhibiting
resistance to electro-chemical erosion in such aircraft hydraulic
system by employing in the aircraft hydraulic systems operating
at about 4000 psi as an aircraft hydraulic fluid a phosphate ester
functional fluid comprising a major amount of fire resistant
phosphate ester base stock and a minor effective amount of
additives comprising one or more perfluoroalkyl sulfonic acid
or perfluorocycloalkyl sulfonic acid, and salts of the same, anti
erosion agent(s), one or more monoepoxide acid scavenger(s)
and one or more viscosity index improver(s).

(App. Br. 40, Claims Appendix; bracketed text and underlining omitted.)
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ISSUES
Appellants assert that we “agree[d] that operation of the [hydraulic]
fluid [recited in claim 1] at 4000 psi is an unexpected result” (Request at 3).
According to Appellants, “the admitted unexpected result is being relied
upon not to support an attempt to patent the composition but, rather, to
support method claims” (id. at 5). Appellants urge that while “[o]ne of
ordinary skill in the art may have been led to test the Deetman fluid at high
temperature and high pressure, and while operation and stability at higher
temperatures may have been expected[,] [t]he Board has already indicated
that it was unexpected that the fluid would be suitable at high pressures of
4000 psi” (id. at 7-8). Appellants further contend that “the hydraulic fluid
will be satisfactory at pressures of about 4000 psi is not the discovery of an
optimum or workable range from within ranges already broadly recited by
the references” (id. at 4). Specifically, Appellants argue that “[a]bsent a
reasonable expectation of success, the mere testing of the combination, or
change in range, or, as here testing at high pressure is not sufficient in and of
itself to support an obviousness rejection” (id. at 8).
Thus, the issues arising from Appellants’ contentions are:
(1) Have Appellants shown that we erred in our obviousness
conclusion because it conflicts with our ruling that operation of the hydraulic
fluid at 4000 psi is an unexpected result?
(2) Have Appellants shown that we erred in our conclusion that a
person having ordinary skill in the art would have found the workable
pressure ranges of Deetman’s hydraulic fluid by routine experimentation?

Appeal 2008-005775
Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

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FINDINGS OF FACT
1. The Examiner stated that “it would have been obvious to one
having ordinary skill in the art . . . to use the hydraulic fluids of
Deetman . . . at a pressure of about 4000 psi (claim 1) or about
5000 psi or higher (claims 2 and 20) because Deetman teaches
that these fluid have improved thermal, hydraulic and oxidative
stability (column 1, lines 9-12)” (Examiner’s Answer mailed
October 19, 2007 at 5-6).
2. Our original Decision stated (p. 10):
While we agree with Appellants that Deetman’s
teachings concerning improved stability for the disclosed
fluid at higher temperatures is insufficient to establish an
expectation that fluid would be suitable at a pressure of
about 4000 psi (Facts 13 and 14), we are nevertheless
unpersuaded that the Examiner committed reversible
error.
3. It is undisputed that Deetman describes every limitation of
claim 1 except for the claimed pressure of 4000 psi (Request 2-
13).
4. The patent under reexamination (‘355 Patent) states that “[t]he
standard operating pressure for aircraft hydraulic systems is
nominally 3000 psi” (col. 1, ll. 26-28).
5. The ‘355 Patent acknowledges that it is known to operate some
military aircraft hydraulic systems at pressures above 3000 psi
(and up to 5000 psi) (col. 1, ll. 29-36).
6. The ‘355 Patent further acknowledges that the Concorde
supersonic civil transport aircraft hydraulic system operates at
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4000 psi, although “it utilizes a silicate ester hydraulic fluid
rather than a phosphate ester hydraulic fluid” (col. 1, ll. 36-39).
7. Deetman does not explicitly disclose a broad range of suitable
operating pressures.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation contained within the
prior art references). Id. at 419 (“The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents”).
It has long been an axiom of patent law that it is not inventive to
discover the optimum or workable ranges of result-effective variables by
routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
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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.”).

ANALYSIS
Issue (1):
Appellants’ contention that we admitted that “operation of the
[Deetman] fluid at 4000 psi is an unexpected result” (Request 3) is
erroneous and therefore utterly without merit. Our original Decision merely
stated that we did not agree with the Examiner’s reasoning for concluding
obviousness (Facts 1 and 2). Contrary to Appellants’ belief, we held that the
claimed subject matter would have been obvious to a person having ordinary
skill in the art (original Decision 11).
Accordingly, we decline to make any changes to our Decision based
on Appellants’ erroneous belief.

Issue (2):
Appellants are correct that Deetman does not explicitly disclose a
broad range of suitable pressures that encompasses the claimed pressure of
4000 psi (Request 4; Facts 3 and 7). In our view, however, the absence of an
explicit disclosure of a range of suitable pressures does not compel a
conclusion of nonobviousness. KSR, 550 U.S. at 419.
Here, Deetman leaves it up to the person having ordinary skill in the
art to determine, through nothing more than routine experimentation, the
workable range of pressures. Indeed, Appellants appear to acknowledge that
such a person having ordinary skill in the art would have performed such
routine experimentation (Request 7-8 and 12). Given that it was known that
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certain aircraft hydraulics demanded pressures as high as those claimed here,
a person having ordinary skill in the art would have tested Deetman’s fluid
to determine its suitability at pressures previously used for aircraft
hydraulics, including a pressure of 4000 psi, and, upon testing, would have
necessarily found that the prior art fluid is in fact suitable (Facts 4-7). While
Appellants assert that the prior art provides no reasonable expectation of
success, obviousness does not require absolute predictability. In re
O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under
§103, all that is required is a reasonable expectation of success”).
Accordingly, we discern no error in our original Decision.

CONCLUSION
On this record, Appellants have failed to: (1) show that we found that
operation of the hydraulic fluid at 4000 psi is an unexpected result; and (2)
show that we erred in our obviousness conclusion because Deetman does not
explicitly disclose a broad range of suitable operating pressures that
encompasses the claimed pressures.

DECISION
While we have reconsidered certain aspects of our original Decision
in light of Appellant’s Request, we decline to modify our original Decision
in any respect.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
DENIED

Appeal 2008-005775
Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

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ack

PATENT OWNERS:

EXXONMOBIL RESEARCH & ENGINEERING COMPANY
PO BOX 900
1545 ROUTE 22 EAST
ANNANDALE NJ 08801-0900

THIRD PARTY REQUESTER:

ANDREW S. BRENC
BRENC LAW
PO BOX 155
ALBION PA 16401