Ex Parte 6703355 et al

Board of Patent Appeals and Interferences

Jan 15, 2009

90007712 (B.P.A.I. Jan. 15, 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
____________

Appeal 2008-5775
Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2
Technology Center 3900
____________

Decided: January 15, 2009
____________

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

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owners ExxonMobil Research & Engineering Co. and EADS
Airbus SA (hereinafter “Appellants”) appeal under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claims 1-20 (Appeal Brief filed August 6, 2007,
hereinafter “App. Br.,” 1, 2, 8, and 9; Final Office Action mailed August 4,
2006). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
Appeal 2008-5775
Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

We AFFIRM. However, since our reasoning differs substantially
from that of the Examiner, we designate our affirmance as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) in order to preserve Appellants’
procedural safeguards under the rules of practice.

STATEMENT OF THE CASE
This merged reexamination proceeding arose from a consolidation of
two separate requests for ex parte reexamination filed by Third Party
Requestor Andrew S. Brenc of Brenc Law on August 8, 2004 (90/007,158)
and September 10, 2005 (90/007,712) of United States Patent 6,703,355 B2
(‘355 Patent) originally issued to Shlomo Antika, Marc-Andre Poirier, Jean-
Michel Pascual, and Gerard Dallemagne on March 9, 2004 (Decision
Merging Reexamination Proceedings mailed on February 16, 2006). We
have not been made aware of any pending court proceedings involving the
‘355 Patent.
The ‘355 Patent states that the invention relates to a method for
lubricating high pressure aircraft hydraulic systems using a phosphate ester
fluid as the hydraulic fluid (col. 1, ll. 10-13).
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
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Appeal 2008-5775
Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

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.)

The Examiner relied upon the following as evidence of
unpatentability:
Gamrath 2,707,176 Apr. 26, 1955
Deetman 5,464,551 Nov. 7, 1995

Wolfe, T.C., “Phosphate Ester Hydraulic Fluid Performance at Higher
Pressure,” Solutia (October 14, 1998) (hereinafter Wolfe).

“JAWS OF LIFE Rescue Systems,” Instruction Manual: 5.5 HP Honda Gas
Power Unit, Rev. A, Hurst Emergency Products (1997) (hereinafter “JAWS
OF LIFE”).

The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over: (i) Deetman alone; (ii) Deetman and Wolfe; (iii)
Deetman, Wolfe, and “JAWS OF LIFE”; or (iv) Gamrath, Deetman, Wolfe,
and “JAWS OF LIFE” (Examiner’s Answer mailed October 19, 2007,
hereinafter “Ans.,” 4-10).1
Deetman is a key prior art reference in all four of the Examiner’s
rejections. Specifically, the Examiner found that “Deetman . . . teaches the
hydraulic fluids of the claims” but does not disclose the “hydraulic pressures

1 According to the Examiner, a final rejection of claims 1-20 under the
second paragraph of 35 U.S.C. § 112 has been withdrawn (Ans. 3; Final
Office Action at 10).
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Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

for which the hydraulic fluids are suitable” (Ans. 5). Nevertheless, the
Examiner concluded that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to use the
hydraulic fluids of Deetman in a hydraulic system, including an aircraft
hydraulic system operating at a pressure of about 4000 psi . . . because
Deetman teaches that these fluids have improved thermal, hydraulic and
oxidative stability. . . .” (Ans. 5-6). Appellants, on the other hand, contend
that “Deetman does not teach, suggest or imply that those fluids, whose
demonstrated utility are in hydraulic systems operating at elevated
temperature at up to about 3000 psi can be necessarily expected to be
successfully employable at pressures significantly in excess of 3000 psi”
(App. Br. 11).

ISSUE
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that a person having ordinary skill in the art would have found it obvious to
operate Deetman’s aircraft hydraulic fluid at about 4000 psi in view of the
applied prior art?

FINDINGS OF FACT
1. The ‘355 Patent states that “[c]ommercial transport aircraft
typically utilize phosphate ester hydraulic fluids while military
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Patent 6,703,355 B2

aircraft utilize mineral oil or polyalphaolefin hydraulic fluids”
(col. 1, ll. 24-26).
2. According to the ’355 Patent, phosphate esters have superior
fire resistance properties, but tend to absorb atmospheric
moisture readily and build up high concentrations of water (col.
1, ll. 43-52).
3. Further according to the ’355 Patent, phosphate esters react
with water (hydrolyze) to form alcohols and acids (col. 1, ll. 52-
53).
4. The extent of hydrolysis sets the life of the phosphate ester fluid
(col. 1, ll. 53-56).
5. Damage to hydraulic system parts by acid erosion increases
with increasing operating temperature and with increasing
differential pressure to which a hydraulic pressure device is
exposed (col. 1, ll. 57-63).
6. The ‘355 Patent further states that “[t]he standard operating
pressure for aircraft hydraulic systems is nominally 3000 psi”
(col. 1, ll. 26-28).
7. 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).
8. The ‘355 Patent further acknowledges that the Concorde
supersonic civil transport aircraft hydraulic system operates at
4000 psi, although “it utilizes a silicate ester hydraulic fluid
rather than a phosphate ester hydraulic fluid” (col. 1, ll. 36-39).
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Patent 6,703,355 B2

9. Deetman discloses a phosphate ester aircraft hydraulic fluid
having improved thermal, hydrolytic, and oxidative stability
(col. 1, ll. 9-12).
10. Specifically, Deetman describes an aircraft hydraulic fluid
comprising: a fire resistant phosphate ester base stock, the
base stock comprising between about 10% and about 100% by
weight of a trialkyl phosphate, between about 0% and about
70% by weight of a dialkyl aryl phosphate, and from about 0%
to about 25% by weight of an alkyl diaryl phosphate, with the
proviso that the sum of the proportionate amount of each base
stock component must equal 100%, each alkyl group having
between 3 and 8 carbon atoms and bonded to the phosphate
moiety via a primary carbon, the alkyl group preferably being
an isoalkyl group; an acid scavenger in an amount effective to
neutralize phosphoric acid partial esters formed in situ by
hydrolysis of any of the phosphate esters of the base stock; an
anti-erosion additive in an amount effective to inhibit flow-
induced electrochemical or zeta corrosion of the flow metering
edges of hydraulic servo valves in hydraulic systems; a
viscosity index improver in an amount effective to cause the
fluid composition to exhibit a viscosity of at least about 3.0
centistokes at about 210°F., at least about 9.0 centistokes at
about 100°F., and less than about 4200 centistokes at -65°F.; an
anti-oxidant in an amount effective to inhibit oxidation of fluid
composition components in the presence of oxygen; and a
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Patent 6,703,355 B2

copper and iron corrosion inhibitors (col. 2, l. 43 to col. 3, l. 11;
col. 3, ll. 37-41; col. 3, l. 57 to col. 4, l. 9; col. 4, ll. 22-35; col.
10, l. 16 to col. 11, l. 46).
11. In Table 1, Deetman teaches the use of triaryl phosphate ester
(col. 12, ll. 33-47).
12. Deetman teaches 3,4-epoxycyclohexane carboxylate is a
preferred acid scavenger (col. 7, l. 66 to col. 8, l. 1).
13. Deetman also teaches that a potassium salt of a
perfluoroalkylsulfonic acid is a preferred anti-erosion agent
(col. 9, ll. 1-3).
14. Deetman further teaches the use of a mixture of ammonium
hexafluorophosphate and calcium
di(perfluoromethanesulfonate) as the anti-erosion agent (col.
33, ll. 11-14).
15. The Examiner’s determination that Deetman would have
disclosed or suggested the components (in appropriate amounts)
that make up the hydraulic fluid recited in the appealed claims
is undisputed.
16. Deetman does not explicitly disclose the range of suitable
aircraft hydraulic operating pressures for the disclosed
hydraulic fluid.
17. Appellants relied on a Declaration of Shlomo Antika filed
pursuant to 37 C.F.R. § 1.132 on August 25, 2005 (Evidence
Appendix; hereinafter “Antika Declaration”).
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Patent 6,703,355 B2

18. The Antika Declaration states that not all phosphate ester
hydraulic fluids perform satisfactorily (Antika Declaration 2-3).
19. The Antika Declaration asserts (3-4):
[A]pplicants had surprisingly found that the HyJet IV-A
Plus formulation (i.e., formulations containing mono
epoxide acid scavenger and perfluoroalkyl sulfonate anti-
erosion additive) can meet performance requirements
when operated at over 5000 psi, as well as at 3000 psi as
demonstrated for such fluid in Tables A and B of U.S.
Patent 6,703,355 while indicating that the HyJet IV-A
formulation listed in Table 11 (of Deetman reference)
will not meet performance requirements at high pressure;
. . . .

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
“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., 127 S. Ct. 1727,
1734 (2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“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
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Patent 6,703,355 B2

content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine. . . .”).
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
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.”).
When a product recited in a claim reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is on appellant to prove that the prior art product does not inherently or
necessarily possess the characteristics attributed to the claimed product. Cf.
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252,
1255 (CCPA 1977). Whether the rejection is based on inherency under 35
U.S.C. § 102 or on obviousness under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
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Patent 6,703,355 B2

by the PTO’s inability to manufacture products or to obtain and compare
prior art products. Best, 562 F.2d at 1255.

ANALYSIS
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 the 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.
In this case, Appellants do not dispute that Deetman would have at
least suggested the same hydraulic fluid recited in the appealed claims (Facts
9-15). Rather, Appellants focus on the lack of an explicit disclosure in
Deetman as to the suitable operating pressures for the disclosed fluid (Fact
16). But Appellants’ focus on the lack of an explicit disclosure of suitable
ranges is misplaced. KSR, 127 S. Ct. at 1741 (“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. Peterson, 315 F.3d at 1330 (“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.”); Aller, 220 F.2d at 456
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
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Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

not inventive to discover the optimum or workable ranges by routine
experimentation.”).
Applying this principle, we conclude that a person having ordinary
skill in the art would have determined, through nothing more than routine
experimentation, the range of suitable operating pressures for Deetman’s
hydraulic fluid, including pressures of about 4000-5000 psi. In determining
the entire range of suitable operating pressures, a person having ordinary
skill in the art would have been led to test Deetman’s hydraulic fluid at
pressures that have been used in the prior art, including 4000-5000 psi, and
would have found from that experimentation that the fluid is in fact suitable
for 4000-5000 psi (Facts 1-8). On this point, it would reasonably appear that
Deetman’s hydraulic fluid would necessarily be suitable for operation at
higher pressures including 4000-5000 psi in view of its substantial identity
or similarity to the hydraulic fluid recited in the appealed claims. Indeed,
just like the hydraulic fluids recited in the appealed claims, Deetman’s fluid
also contains a mono epoxide acid scavenger and perfluoroalkyl sulfonate
anti-erosion additive (Facts 10-14 and 19). Appellants have failed to
demonstrate with persuasive evidence that Deetman’s fluid would not be
capable of operation at the claimed pressures. Spada, 911 F.2d at 708; Best,
562 F.2d at 1255.
For these reasons, the claimed subject matter would have been
obvious to a person having ordinary skill in the art in view of Deetman’s
disclosure alone.

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Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

CONCLUSION
On this record, we determine that Appellants have failed to show
reversible error in the Examiner’s conclusion that a person having ordinary
skill in the art would have found it obvious to operate Deetman’s aircraft
hydraulic fluid at about 4000 psi in view of the applied prior art. To
safeguard Appellants’ procedural due process, we designate our affirmance
as a new ground of rejection.

DECISION
The Examiner’s decision to reject appealed claims 1-20 is affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to 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 proceeding
will be remanded to the Examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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Reexamination Control 90/007,158 and 90/007,712
Patent 6,703,355 B2

Should Appellants elect to prosecute further before the examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the examiner and this does not
result in termination of the reexamination or a second appeal, this case
should be returned to the Board of Patent Appeals and Interferences for final
action on the affirmed rejections, including any timely request for rehearing
thereof.
AFFIRMED
37 C.F.R. § 41.50(b)

rvb

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
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