Ex Parte 7279018 et al

Board of Patent Appeals and Interferences

Mar 22, 2012

90010549 (B.P.A.I. Mar. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
90/010,549 05/22/2009 7279018 11202.0002-00 5242
22852 7590 03/22/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/22/2012 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 Neste Oil Oyj,
Patent Owner and Appellant
____________

Appeal 2012-002608
Reexamination Control 90/010,549
Patent 7,279,018 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-002608
Reexamination Control 90/010,549
Patent 7,279,018 B2

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Neste Oil Oyj, the owner of Patent 7,279,018 B2 under reexamination
(hereinafter the “‘018 Patent”), appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-6 (Appeal Brief filed July 6, 2011,
hereinafter “App. Br.,” at 10; Final Office Action mailed January 7, 2011).
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Todd D. Mattingly, of Bracewell & Giuliani
LLP (Request for Ex Parte Reexamination filed May 22, 2009).
The ‘018 Patent relates to fuel compositions for diesel engines.
(Col. 1, ll. 5-10.)
Claim 1 on appeal reads as follows (underlining and bracketing show
additions and subtractions, respectively, relative to the original claims of the
‘018 patent):
1. A fuel composition for diesel engines [comprising]
consisting of:
a) 0.1-99% by volume of a component or a mixture of
components, which are free of aromates and suitable for a
diesel fuel, produced from biological raw material originating
from animals or originating from both plants and animals by
hydrogenating and decomposing fatty acids and/or fatty acid
esters to give hydrocarbons and isomerizing the hydrocarbons
to give isoparaffins;
b) 0-20% by volume of components containing oxygen
selected from the group consisting of aliphatic alcohols, ethers,
fatty acid esters, water and mixtures containing the same;
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both components a) and b) being mixed as an emulsion
with or dissolved in diesel components based on crude oil
and/or fractions from Fischer-Tropsch process.

(Claims App’x, App. Br. 21.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed August 12, 2011, hereinafter
“Ans.,” 3):
Monnier US 5,705,722 Jan. 6, 1998
Nylund WO 95/25152 Sep. 21, 1995
Neste Oy SE 9700149 Aug. 6, 1997
(English Translation of Record, hereinafter “SE ‘149”)

Appellant relied on certain parts of the following (App. Br. 23):
Decl. of Pekka Aalto dated March 23, 2010 (hereinafter “the Aalto
Declaration”).

REJECTION
The Examiner rejected claims 1-6 under 35 U.S.C. § 103(a) as
obvious over Monnier in view of Nylund and SE ‘149. (Ans. 3-5.)

ISSUE
The Examiner found that Monnier discloses the components recited in
claim 1, with the exception that Monnier does not disclose that the
hydrocarbons derived from animal materials corresponding to component a)
are isomerized as recited in claim 1. (Ans. 3-4.) The Examiner found that
because Nylund discloses that all bio-oils are structurally similar, and that
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SE ‘149 discloses isomerizing vegetable oils in order to improve low
temperature properties in diesel fuels, it would have been obvious to
isomerize the hydrocarbons derived from the animal materials disclosed in
Monnier. (Ans. 4-5.)
Appellant contends that Monnier does not disclose that the
hydrocarbons corresponding to component a) are free of aromates and
suitable for a diesel fuel as required by the claims. (App. Br. 15-18.) For
support, Appellant points to the Aalto Declaration, which purports to
reproduce Monnier’s examples to show that the hydrocarbons produced
therein include aromates and are unsuitable for diesel fuel additives. (App.
Br. 16-18.) Appellant also contends that Monnier is non-enabling because
the reproduced examples in the Aalto Declaration do not yield the values
disclosed in Monnier. (App. Br. 19.) Appellant further argues that there is
no reason to modify Monnier because Monnier is directed to high cetane
number additives, and it is well known that isomerization reduces cetane
number. (App. Br. 18.)
Thus, the principal issue in this appeal is:
Does the evidence of record as a whole support the Examiner’s
conclusion that the fuel composition as claimed would have been obvious to
one of ordinary skill in the art in view of Monnier, Nylund, and SE ‘149?

FINDINGS OF FACT (“FF”)
1. The ‘018 Patent discloses: “The properties of the diesel fuel
composition of biological origin according to the invention
correspond to those of a high quality diesel fuel based on crude
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oil, it is free of aromates and, in contrast to FAME [fatty acid
methyl ester], it leaves no impurity residues.” (Col. 5, ll. 1-5.)
2. The ‘018 Patent does not expressly describe the conditions used
to hydrogenate and isomerize the biological raw materials in
producing isoparaffins.
3. Monnier discloses additives for diesel fuels having high cetane
number derived from biomass feedstocks including animal fats.
(Col. 1, ll. 10-13, 58-67.)
4. Monnier discloses that the biomass feedstock is subjected to
hydroprocessing at temperatures of at least 350 ºC, where the
hydrogen pressure can vary widely between about 4 MPa and
15 MPa and the liquid hourly space velocity (LHSV) can vary
widely between 0.5-5.0 hr-1. (Col. 2, ll. 44-63.)
5. SE ‘149 discloses a process where fatty acids or triglycerides of
a vegetable oil are hydrogenated to give n-paraffins, which are
then converted to paraffins with branched chains and used as
components for diesel fuels. (P. 2, ll. 15-24.)
6. SE ‘149 discloses that the n-paraffins are isomerized so as to
retain favorable properties such as high cetane number. (P. 3,
ll. 13-19, p. 5, ll. 15-16.)
7. SE ‘149 discloses that the products may be free of aromatics.
(P. 5, l. 6.)
8. SE ‘149 discloses that the isomerization takes place at a
temperature from 200 to 500 ºC. (P. 4, l. 21.)
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9. In reproducing Monnier Example 5, the Aalto Declaration notes
the following differences between reproduced example and the
Example 5: the animal tallow employed is from Tyson Foods,
Inc. rather than animal tallow from West Coast Reduction Ltd.;
the hydrogen pressure was varied; and dimethyl sulfide was
used for spiking instead of CS2. The Aalto Declaration
characterizes such differences as insignificant. (Para. 1.2.)
10. The Aalto Declaration produces two examples that allegedly
reproduced Example 5 of Monnier at temperatures of 370 and
369 ºC, hydrogen pressures of 80 and 82 bar, and 1.0 and 1.1 h-
1 liquid space velocity, designated as “Monnier Example 5
HDO A” and “Monnier Example 5 HDO B,” respectively.
(Para. 1.2.)
11. The Aalto Declaration states that in producing a hydrogenated
product of animal tallow from Tyson Foods, Inc. according to
the ‘018 Patent, the temperature was decreased by 60 degrees C
(370 ºC v. 310 ºC), and the pressure was decreased by 31 bar
(80 bar v. 49 bar), where the conditions take into account the
starting material used in the process. (Para. 1.3, FN 1.)

ANALYSIS
The Examiner’s position is that because claim 1 is directed to a
composition and includes “diesel components based on crude oil and/or
fractions from Fischer-Tropsch process,” whether component a) is initially
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free of aromates is irrelevant as the diesel components recited in the claims
may contain aromates, such that the composition as a whole may contain
aromates. (Ans. 7-9.) Appellant contends that in order for the prior art to
teach or suggest the claimed compositions, at some point, each of the
claimed components must be present, including component a), which is free
of aromates. (App. Br. 13-14, Reply Brief filed October 11, 2011,
hereinafter (Rep. Br.” at 1-3, citing Exxon v. Lubrizol, 64 F.3d 1553, 1558
(Fed. Cir. 1995).)
We essentially agree with the Examiner that the claims are directed to
the composition, which may include aromates as a result of containing diesel
components based on crude oil and/or fractions from Fischer-Tropsch
process. Accordingly, we do not agree that the recitation that component a)
is free of aromates distinguishes the prior art.
However, even if we assume that Appellant’s claim construction is
correct, we are not persuaded by Appellant’s evidence that the hydrogenated
animal tallows disclosed in Monnier would necessarily contain aromates or
that preparing hydrocarbons free of aromates would not have been obvious
to one of ordinary skill in the art. Specifically, Monnier discloses that the
hydroprocessing temperature may be as low as 350 ºC and that the hydrogen
pressure and liquid hourly space velocity may vary quite widely. (FF 4.)
Thus, the examples allegedly reproduced from Monnier test one similar set
of conditions, and are not reflective of Monnier’s entire disclosure. (FF 9,
10.)
In addition, the only identified differences between Appellant’s
reproduced examples of Monnier and the inventive hydrogenated product
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appear to be the conditions used to hydrogenate the starting animal tallow.
(FF 11.) Thus, it appears that the process conditions (temperature, pressure,
liquid hourly space velocity) control whether aromates are produced in the
hydrogenation reaction. As discussed above, Monnier discloses
hydroprocessing temperatures as low as 350 ºC, which lies between the
temperatures of Appellant’s reproduced examples of Monnier and the
temperatures used to produce the hydrogenated product according to the
’018 Patent. (FF 9-11.) We have not been directed to sufficient evidence
that at a temperature of 350 ºC, or at other pressures and liquid hourly space
velocities, the hydrogenated products would contain aromates.
Moreover, although Appellant contends that SE ‘149 recommends
isomerization temperatures of about 330 ºC, SE ‘149 discloses a broad range
of between 200-500 ºC, which does not require a “higher operating
temperature” as argued by Appellant. (App. Br. 16; FF 8.) Further, SE ‘149
discloses that hydrogenated products may be free of aromatics. (FF 5, 7.)
Thus, since Appellant does not identify any particular process conditions in
the ‘018 Patent (FF 2), we presume that one of ordinary skill in the art would
have been capable of adjusting the process conditions in order to obtain a
hydrogenated product free of aromates as suggested by SE ‘149.
We are also not persuaded by Appellant’s argument that Monnier’s
products are unacceptable for diesel fuel compositions in view of the
experimental results obtained in the Aalto Declaration. Monnier expressly
discloses the use of fuel additives for diesel fuel. (FF 3.) SE ‘149 also
discloses that the isomerized products are useful for diesel fuel additives.
(FF 5.) Appellant acknowledges that the reproduced examples from
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Monnier differ from the actual examples disclosed therein, but asserts that
such differences are insignificant. (Aalto Declaration, para. 1.2.)
However, in reviewing the results of the reproduced examples, we
observe that by varying the temperature by one degree, the hydrogen
pressure by 2 bar, and the liquid space velocity by 0.1 h-1, the resulting
products produce different results between “Monnier Example 5 HDO A”
and “Monnier Example 5 HDO B” with respect to boiling point distribution,
cloud point, and cloud point of isomerized products. (FF 10; Aalto
Declaration, Examples 2, 4, and 6.) The Aalto Declaration does not explain
why the noted differences in starting materials and conditions would have
been insignificant, given that very slight changes in conditions produce
varying results. Accordingly, we do not find Appellant’s experimental
results persuasive in determining whether Monnier’s additives are suitable
for diesel fuels.
For similar reasons, we do not subscribe to Appellant’s view that
Monnier is non-enabling because the results of the allegedly reproduced
examples of Monnier are not consistent with the results reported in Monnier.
We are also not persuaded that one of ordinary skill in the art would
not have been motivated to isomerize the hydrocarbons produced in
Monnier, because Monnier discloses additives with high cetane number. SE
‘149 expressly discloses that isomerization may take place while retaining
favorable properties such as high cetane number. (FF 6.)
Accordingly, we find that the evidence of obviousness of record
outweighs the evidence presented by Appellant.

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CONCLUSION
On this record, the evidence of record as a whole supports the
Examiner’s conclusion that the fuel composition as claimed would have
been obvious to one of ordinary skill in the art in view of Monnier, Nylund,
and SE ‘149.

DECISION
The Examiner’s decision to reject claims 1-6 under 35 U.S.C. § 103(a)
is affirmed.
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).

AFFIRMED

Appeal 2012-002608
Reexamination Control 90/010,549
Patent 7,279,018 B2

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FOR PATENT OWNER:
FINNEGAN, HENDERSON, FARABOW, GARRETT
& DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413

FOR THIRD-PARTY REQUESTER:
BRACEWELL & GIULIANI LLP
P.O. BOX 61389
HOUSTON, TX 77208-1389