10149303 (B.P.A.I. Jan. 27, 2009)

Ex Parte Aradi et al

Board of Patent Appeals and InterferencesJan 27, 2009

10149303 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALLEN A. ARADI, JOSEPH W. ROOS, HERBERT M. SCULL, and MICHAEL W. MEFFERT __________ Appeal 2008-5702 Application 10/149,303 Technology Center 1700 ____________ Decided: January 27, 2009 ____________ Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and JEFFREY B. ROBERTSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-26. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appeal 2008-5702 Application 10/149,303 We REVERSE.1 INTRODUCTION Appellants claim a method for controlling injector deposits in a direct injection gasoline engine (claim 1), and a method for reducing soot loading in the crankcase lubricating oil of a vehicle having a direct injection gasoline engine (claim 14). Both methods are claimed as having a spark-ignition fuel and a fuel-soluble cyclopentadienyl manganese tricarbonyl compound (claims 1 and 14). Claim 1 is illustrative: 1. A method for controlling injector deposits in a direct injection gasoline engine which comprises introducing into a direct injection gasoline engine with the combustion intake charge a spark-ignition fuel composition comprising a) a spark-ignition fuel and b) a fuel-soluble cyclopentadienyl manganese tricarbonyl compound. The Examiner relies on the following prior art references as evidence of unpatentability: Cunningham 5,551,957 Sep. 3, 19962 McDonnell 5,997,593 Dec. 7, 1999 The rejections provided by the Examiner are as follows: 1. Claims 1-5, 8, 9, 13-18, 21, 22, and 26 are rejected under 35 U.S.C. § 102(b) as being unpatentable over McDonnell. 1 An oral hearing was held in this Appeal on January 15, 2009. 2 Though the Cunningham patent is not listed in the “Evidence Relied Upon” section of the Answer, it is clear from the Brief (App. Br. 3) and the Answer (Ans. 4) that both Appellants and the Examiner understand that Cunningham is relied upon in the § 103 rejection on appeal. 2 Appeal 2008-5702 Application 10/149,303 2. Claims 6, 7, 10-12, 19, 20 and 23-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over McDonnell in view of Cunningham. 35 U.S.C. § 102(b) REJECTION OVER MCDONNELL The Examiner finds that McDonnell discloses a fuel composition that contains cyclopentadienyl manganese tricarbonyl compounds, which is useful in direct inject gasoline engines (Ans. 3). Based on these disclosures, the Examiner finds that McDonnell’s fuel composition would inherently perform Appellants’ claimed method (Ans. 3). Appellants argue that McDonnell does not inherently disclose the fuel composition performing the claimed method (App. Br. 3). Appellants contend that McDonnell does not disclose any experimental examples of use of the fuel composition in a direct injection gasoline engine (App. Br. 4). ISSUE Have Appellants shown that the Examiner reversibly erred in finding that McDonnell’s disclosure anticipates Appellants’ claimed method? We answer this question in the affirmative. PRINCIPLES OF LAW To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A rejection 35 U.S.C. § 102 is proper only when the claimed subject matter is identically disclosed or described in the prior art, without any need for picking, choosing and combining various disclosures. In re Arkley, 455 F.2d 586, 587 (CCPA 3 Appeal 2008-5702 Application 10/149,303 1972). Picking, choosing and combining various disclosures not directly related to each other by the teachings of the prior art may be entirely proper in the making of a § 103 rejection, not a §102 rejection. Id. FACTUAL FINDINGS (FF) 1. McDonnell discloses a fuel composition comprising “an additive for hydrocarbon fuels . . . that increases the lubricity of the fuel without adding factors that would damage the fuel system of a vehicle” (col. 1, ll. 4-10). 2. McDonnell discloses adding a lubricity additive to the fuel to reduce wear on the fuel pump (col. 3, ll. 11-21). 3. McDonnell discloses that supplemental additives may be added to the fuel including “detergents, dispersants, cetane improvers, antioxidants, carrier fluids, metal deactivators, dyes, markers, corrosion inhibitors, biocides, antistatic additives, drag reducing agents, demulsifiers, dehazers, anti-icing additives, antiknock additives, anti-valve-seat recession additives, additional lubricity additives and combustion improvers” (col. 5, ll. 25-33). 4. McDonnell discloses that the preferred combustion improvers are cyclopentadienyl manganese tricarbonyl compounds because of their ability to significantly improve the octane quality of gasolines (col. 5, ll. 34-40). 5. McDonnell discloses that direct injection gasoline fuel pumps operate at much higher pressures and the fuel composition with the lubricity additive would address the needs of the fuel pump in an efficient and economical manner (col. 8, ll. 60-65). 4 Appeal 2008-5702 Application 10/149,303 6. McDonnell does not exemplify using a fuel with the cyclopentadienyl manganese tricarbonyl compound in a direct injection gasoline engine. ANALYSIS Based on the above findings of fact, we determine that the Examiner erred in finding that McDonnell anticipates the claimed invention. McDonnell does not identically disclose using a fuel composition with a cyclopentadienyl manganese tricarbonyl compound in a direct injection gasoline engine as required by the claims so as satisfy the requirements of 35 U.S.C. § 102. Arkley, 455 F.2d at 587. McDonnell discloses a fuel composition with a lubricity additive that may include any combination of 19 possible supplemental additives, one of which may be a combustion improver (FF 3). McDonnell further discloses that the preferred combustion improvers are cyclopentadienyl manganese tricarbonyl compounds (FF 4). McDonnell’s fuel composition with the lubricity additive may efficiently and economically address lubrication problems in direct injection gasoline engines (FF 5). Based on McDonnell’s disclosures, one of ordinary skill in the art would have had to choose to add a combustion improver from the list of 19 supplemental additives to the fuel, to select a cyclopentadienyl manganese tricarbonyl compound as the combustion improver, and then to use the resulting fuel composition in a direct injection gasoline engine. While such picking and choosing may be proper for a § 103 rejection, it is not proper to satisfy the requirements of 35 U.S.C. § 102. Arkley, 455 F.2d at 587. 5 Appeal 2008-5702 Application 10/149,303 Accordingly, we reverse the Examiner’s § 102 rejection over McDonnell. Because the § 102 rejection includes claims 1 and 14, the only independent claims on appeal, the § 103 rejection of dependent claims 6, 7, 10-12, 19, 20, and 23-25 over McDonnell in view of Cunningham must also be reversed for the same reasons. DECISION We reverse the Examiner’s 35 U.S.C. § 102(b) rejection of claims 1-5, 8, 9, 13-18, 21, 22, and 26 over McDonnell. We reverse the Examiner’s 35 U.S.C. § 103 rejection of claims 6, 7, 10-12, 19, 20, and 23-25 over McDonnell in view of Cunningham. The Examiner’s decision is reversed. ORDER REVERSED ssl Thomas, Raring & Teague, P.C. New Market Services 536 Granite Avenue Richmond VA 23226 6