Ex Parte Crawshaw et al

Patent Trial and Appeal Board

Mar 2, 2015

11312112 (P.T.A.B. Mar. 2, 2015)

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.
11/312,112 12/20/2005 Elizabeth Helen Crawshaw TS7664 (US) 2479
7590 03/02/2015
Shell Oil Company
910 Louisiana
Houston, TX 77002
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
03/02/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELIZABETH HELEN CRAWSHAW,
LISA CAROLINE LILLEY, and BEVERLY VAN SLUIS
____________

Appeal 2013-001538
Application 11/312,112
1

Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, and 9–18. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a method for increasing the cetane
number of a diesel fuel composition which contains a major proportion of a
diesel base fuel, in order to reach a target cetane number. (Spec. 1). Claim
1 illustrates the subject matter on appeal and is reproduced below:

1
According to Appellants, the real party in interest is Shell Oil Company.
Br. 2.
Appeal 2013-001538
Application 11/312,112

2
1. A method for increasing the cetane number of a
diesel fuel composition which contains a major proportion of a
diesel base fuel, in order to reach a target cetane number X, said
method comprising adding to said base fuel an amount x of a
fatty acid alkyl ester (FAAE) having a cetane number B which
is greater than the cetane number A of said base fuel, said
FAAE is selected from the group consisting of rapeseed methyl
ester, soy methyl ester, palm oil methyl ester, coconut methyl
ester and mixtures thereof, wherein x is less than the amount of
the FAAE which would need to be added to said base fuel in
order to achieve cetane number X if linear blending rules
applied, wherein the concentration of the FAAE in the overall
fuel composition is from 5 to 25% v/v and said fuel
composition being essentially free of other cetane improving
additives.
Appellants’ (Br. 3) request review of the following rejections from the
Examiner’s Final Office Action:
I. Claims 1, 2, and 9–18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Van Gerpen
2
(Jon Van Gerpen, Centane Number Testing
of Biodiesel, in PROCEEDINGS, THIRD LIQUID FUEL CONFERENCE: LIQUID
FUEL AND INDUSTRIAL PRODUCTS FROM RENEWABLE RESOURCES 197–206
(J.S. Cundiff et al. eds., American Society of Agricultural Engineers 1996).
II. Claims 1, 9, 11, 12, and 14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bradin (US 5,578,090 issued Nov. 26, 1996).

2
The document provided in the working file does not include page numbers.
We will reference the document sequentially beginning with the title page as
197.
Appeal 2013-001538
Application 11/312,112

3
OPINION
3

The dispositive issue for this rejection is: Did the Examiner err in
determining that Van Gerpen
4
would have led one skilled in the art to a
method for increasing the cetane number of a diesel fuel composition which
contains a major proportion of a diesel base fuel, in order to reach a target
cetane number as required by the subject matter of independent claim 1?

After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejections. Final Action 2–4.
Appellants argue “[t]here is no teaching in the Gerpen article to
suggest that fatty acid alkyl esters can be used in an amount less than the
amount of fatty alkyl ester that would be needed to achieve a target cetane
number if linear blending rule applies.” (Br. 4 (emphasis omitted)).
Appellants referred to the Declaration of Jean Cadu (signed October 22,
2009) as providing support for patentability of the appealed subject matter.
(Id.). In particular, Appellants argue the Declaration establishes that it is not
possible to conclude that there is a non-linear effect of the cetane number
response as claimed. (Br. 4–6; Decl. 11–15).
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. (Ans. 7; Final Act. 2–3). A
person of ordinary skill in the art preforming the process of Van Gerpen
relating to adding an alkyl ester to a diesel base fuel core to achieve a

3
In addressing both rejections, Appellants have not presented arguments
directed to any specific claim. Br. 3–7. We select independent claim 1 as
representative and will limit our discussion this claim.
4
Both Appellants and the Examiner identify this reference as “Gerpen.”
Appeal 2013-001538
Application 11/312,112

4
desired cetane number would have been led to practice the claimed
invention. Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366
(Fed. Cir. 1999) (“Where, as here, the result is a necessary consequence of
what was deliberately intended, it is of no import that the article’s authors
did not appreciate the results.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable.”);
accord In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Examiner
correctly found that Van Gerpen teaches the effect adding esters to biodiesel
fuel on cetane number. (Final Act. 4–5; Van Gerpen 199–200). Moreover,
the Examiner took the position that the addition of alkyl ester to a diesel
base fuel would have inherently resulted in a nonlinear increase in the cetane
number. The Examiner found
[a]bsent evidence that the mere step of adding alkyl ester
to a diesel base fuel does not result in a nonlinear increase in
the cetane number, one of ordinary skill in the art would expect
that blending a concentration of fatty acid ester of 20% with a
diesel fuel would provide a larger cetane number increase than
predicted from linear blending rules.
(Final Act. 3).
Appellants have not directed us to evidence that establishes a person
of ordinary skill in the art following the teachings of Van Gerpen would not
have been practicing the claimed invention. Appellants have not explained
that a person of ordinary skill in the art adding an alkyl ester to a diesel base
fuel to achieve a desired cetane number, as disclosed by Van Gerpen, would
have been capable of performing a process that would not have inherently
resulted in a nonlinear increase in the cetane number.
Appeal 2013-001538
Application 11/312,112

5
We have considered the Declaration of the inventor, but do not find it
persuasive of establishing patentability of the appealed subject matter.
Although factual evidence is preferable to opinion testimony, such testimony
is entitled to consideration and some weight so long as the opinion is not on
the ultimate legal conclusion at issue. While an opinion as to a legal
conclusion is not entitled to any weight, the underlying basis for the opinion
may be persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962)
(expert opinion that an application meets the requirements of 35 U.S.C.
§ 112 is not entitled to any weight; however, facts supporting a basis for
deciding that the specification complies with 35 U.S.C. § 112 are entitled to
some weight); In re Lindell, 385 F.2d 453, 456 (CCPA 1967). On this
record, Declarant has not directed us to evidence that establishes a person of
ordinary skill in the art following the teachings of Van Gerpen would not
have been practicing the claimed invention. Declarant has not explained that
a person of ordinary skill in the art adding an alkyl ester to a diesel base fuel
to achieve a desired cetane number, as disclosed by Van Gerpen, would not
have been capable of performing a process that would have inherently
resulted in a nonlinear increase in the cetane number.
On this record, we determine that the weight of the evidence taken as
a whole supports the Examiner’s conclusion of obviousness. Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”).
Having determined that all of the claims on appeal are unpatentable
over Van Gerpen, we find it unnecessary to reach a decision on the rejection
of claims 1, 9, 11, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over
Appeal 2013-001538
Application 11/312,112

6
Bradin. In re Basell Poliolefine, 547 F.3d 1371,1379 (Fed. Cir. 2008)
(“Having concluded that the Board properly affirmed the rejection of claims
1-52 of the ′687 patent based on obviousness-type double patenting in view
of the ′987 patent, we need not address the remaining issues raised by Basell
regarding the §§102(b) and 103(a) rejections, as well as the additional
double patenting rejections. Accordingly, the Board's decision is affirmed.”);
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) ( (ITC having
decided a dispositive issue, there was no need for the Commission to decide
other issues decided by the presiding officer)

ORDER
The Examiner’s rejection of 1, 2, and 9–18 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Van Gerpen is affirmed.
We do not reach the Examiner’s rejection of claims 1, 9, 11, 12, and
14 rejected under 35 U.S.C. § 103(a) as unpatentable over Bradin.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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