Ex Parte Dieckmann et al

Board of Patent Appeals and Interferences

Sep 1, 2010

10950653 (B.P.A.I. Sep. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUNTHER H. DIECKMANN, MARK R. BUETZOW, and
DENNIS J. O’REAR
____________

Appeal 2009-014334
Application 10/950,653
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CATHERINE Q. TIMM, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/950,653

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 21, all of the claims pending in
the above-identified application.2 We have jurisdiction under 35 U.S.C. §§ 6
and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a transportable product
containing …wax particles and a liquid” (Spec. 3, ll. 20-22). The stability of
transportable product is said to be “maintained by ensuring that the amount
of wax particles are [sic, is] not too small and the amount of small wax
particles is not excessive” (Spec. 3, ll. 22-24). Details of the appealed
subject matter are recited in representative claim 1 reproduced from the
Claims Appendix to the Revised Appeal Brief as shown below:

1. A transportable product comprising:

a) 90 to 20 weight % of a hydrocarbonaceous liquid
having a true vapor pressure of ≤ 14.7 psia when measured at
20°C, wherein the hydrocarbonaceous liquid comprises ≥ 75
weight % of a liquid selected from the group consisting of
naphtha, heavy oil, distillate, lubricant base oil, and mixtures
thereof; and

b) 10 to 80 weight % of wax particles, wherein the wax
particles comprise ≥ 90 weight % of wax particles larger than
2.4 mm.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the Answer
dated May 13, 2009:

2 See page 2 of the Appeal Brief (“App. Br.”) filed March 9, 2009.
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Application 10/950,653

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Genetti US 6,294,076 B1 Sep. 25, 2001
Waycuilis US 6,313,361 B1 Nov. 6, 2001
O’Rear ‘133 US 2003/0088133 A1 May 8, 2003
O’Rear ‘626 US 2004/0149626 A1 Aug. 5, 2004

Appellants seek review of the following grounds of rejection at pages
2 and 3 of the Appeal Brief:
1) Claims 1 through 7 and 10 through 21 under 35 U.S.C. § 103(a)
as unpatentable over Waycuilis alone or in combination with Genetti,
O’Rear ‘133 and O’Rear ‘6263; and
2) Claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Waycuilis in view of O’Rear ‘626.

FINDINGS OF FACT, ISSUES, CONCLUSIONS, PRINCIPLES OF LAW,
AND ANALYSIS
I. CLAIMS 1-7 AND 10-21 UNDER 35 U.S.C. § 103(a)
Waycuilis, like Appellants, teaches a transportable “stable” slurry
containing 5 to 30 percent of unconsolidated wax particles and the balance
of a liquid hydrocarbon (col. 9, ll. 13-25). This slurry, according to
Waycuilis, is produced from cooling the heavy liquid hydrocarbon phase
from a Fischer-Tropsch reactor to solidify the wax component therein to a

3 Appellants do not argue any of the claims on appeal separately (App. Br. 3-
12). Therefore, for purposes of this appeal, we select claim 1 and decide the
propriety of the Examiner’s § rejections set forth in the Answer based on this
claim alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims
subject to the same ground of rejection are argued as a group by appellant,
the Board may select a single claim from the group of claims that are argued
together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.”).

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plurality of unconsolidated solid wax particles having a typical size of 0.1 to
5mm and mixing the resulting heavy hydrocarbon phase containing such
unconsolidated wax particles with approximately 2% to 33% of the cooled
light liquid hydrocarbon phase from the Fischer-Tropsch reactor (col. 8, l. 51
to col. 9, l. 25, together with col. 3, ll. 25-39). The cooled light liquid
hydrocarbon added to 98% to 67% of the heavy liquid hydrocarbon phase
(light hydrocarbon/heavy hydrocarbon ratio of 0.02:1 to 0.5:1) causes further
growth of the solid wax particles for the transportation purpose (id). The
heavy liquid hydrocarbon phase preferably has 5 to 10% naphtha, 50 to 80%
distillate, 10 to 35% lube stock, and 5 to 30% wax compounds (col. 5, ll. 63-
67). In other words, Waycuilis discloses a transportable stable slurry
containing 5 to 30 weight percent of unconsolidated wax particles having
any size ranging from 0.1 to 5mm or greater and about 95 to 70 weight
percent of a liquid hydrocarbon with 98% to 67% of the liquid hydrocabon
being a mixture of naphtha, distillate, and lubricant base oil. We note that
the liquid hydrocarbon taught by Waycuilis contains the same ingredients as
the claimed hydrocarbonaceous liquid having a true vapor pressure of < 14.7
psia when measured at 20oC. Indeed, Appellants do not argue that the
claimed hydrocarbonaceous liquid is different from the liquid hydrocarbon
taught by Waycuilis.4
It follows that the Examiner has established that Waycuilis would
have rendered the claimed subject matter as represented by claim 1 on
appeal prima facie obvious to one of ordinary skill in the art. As our

4 Both the Examiner and Appellants state that Genetti, O’Real ‘133 and
O’Real ‘626 are relied upon to show the features in dependent claims. (See
Ans. 5 and App. Br. 11.)
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reviewing court in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
stated:
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness. . . . We have also held that a
prima facie case of obviousness exists when the
claimed range and the prior art range do not
overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

Appellants contend at page 5 of the Appeal Brief that:
[T]he requirement that the wax particles of the presently
claimed transportable product comprise ≥ 90 weight % of wax
particles larger than 2.4 mm, along with the claimed
composition of the hydrocarbonaceous liquid and the claimed
concentration of wax particles versus the concentration of the
hydrocarbonaceous liquid, is a critical range exhibiting
unexpected results. The M.P.E.P. recognizes that " 'the law is
replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable
within the claims...In such a situation, the applicants must show
that the particular range is critical, generally by showing that
the claimed range achieves unexpected results relative to the
prior art range.' " M.P.E.P. § 2144.05 citing In re Woodruff
919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore,
demonstrating the criticality of a claimed range by showing
unexpected results over the prior art, rebuts a prima facie case
of obviousness based on overlapping ranges. M.P.E.P. §
2144.05.

In support of this position, Appellants rely on Example 16 at page 45
of the Specification (e.g., App. Br. 5-7 and 10 and 11). According to
Appellants, the samples tested in Example 16 contain 50 weight percent wax
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particles and 50 weight percent naphtha, with 100% of the wax particles in
the first sample being in the size of 2.8 to 3.4 mm, 100 % of the wax
particles in the second sample being in the size of 2.4 to 2.8 mm, 100 % of
the wax particles in the third sample being in the size of 1.4 to 2.4 mm and
91.7% of the wax particles in the fourth sample 2.8 to 3.4 mm (App. Br. 5-
6). Appellants assert at page 5 of the Appeal Brief that:
With regard to the presently claimed transportable product,
having ≥ 90 weight % of wax particles larger than 2.4 mm
unexpectedly results in a passing stability rating when
measured as described in the specification at 20°C for 5 weeks.

On the other hand, referring to In re Freeman, 474 F.2d 1318, 1324
(CCPA 1973); In re Lindner, 457 F.2d 506, 508 (CCPA 1972) and In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984), the Examiner asserts at page 9
of the Answer that Appellants have not demonstrated, among other things,
that the showing in Example 16 is based on a comparison between the
claimed invention and the closest prior art, Waycuilis, and is commensurate
in scope with the claims on appeal.
Thus, the dispositive question is: Have Appellants demonstrated that
the showing relied upon compares the claimed invention with the closest
prior art, Waycuilis, and is commensurate in scope with the claimed
invention as represented by claim 1 on appeal? On this record, we answer
this question in the negative.
As correctly found by the Examiner at pages 9 through 11 of the
Answer, Example 16 relied upon by Appellants does not include any
comparison in the form of experiments between the claimed invention
against the closest prior art reference, Waycuilis, wherein the actual
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difference (i.e., the particle sizes of the wax particles in the claimed and
prior art mixtures of naphtha, distillate, lubricant base oil, and wax particles)
is shown to impart unexpected results. See In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991) ("[R]esults must be shown to be unexpected
compared with the closest prior art."). This is especially true in this case
since Waycuilis indicates that its transportable product containing particular
liquid hydrocarbons and unconsolidated wax particles, like Appellants’
transportable product, is stable. We also note that Appellants assert at page
6 of the Appeal Brief that the composition of the hydrocarbon also affects
the results.
Appellants also have not shown that the showing relied upon is
commensurate in scope with the claims on appeal. In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980). While the showing is limited to a product having 50 weight percent
naphtha and 50 weight percent wax particles, the claimed subject matter as
represented by claim 1 on appeal is not so limited. Appellants have not
shown that hydrocarbon slurries containing distillate and/or lubricant base
oil with less than 50% of wax particles included in the claims on appeal can
reproduce the alleged unexpected results. In fact, Appellants’ assertion at
pages 5 and 6 of the Appeal Brief indicates to the contrary.
Thus, based on the totally of record, including due consideration of
Appellants’ arguments and evidence, we concur with the Examiner that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103.
Accordingly, we affirm the Examiner’s decision rejecting claims 1
through 7 and 10 through 21 under 35 U.S.C. § 103(a) as unpatentable over
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Waycuilis alone or in combination with Genetti, O’Rear ‘133 and O’Rear
‘626.
II. CLAIMS 8 AND 9 UNDER 35 U.S.C. § 103(a)
Appellants rely on the same arguments advanced in connection with
the above rejections of claims 1 through 7 and 10 through 21 to rebut the
Examiner’s § 103(a) rejection of claims 8 and 9 (App. Br. 12).
Accordingly, for the reasons set forth in the Answer and above, we
affirm the Examiner’s decision rejecting claims 8 and 9 under § 103(a)
based on the combined teachings of Waycuilis and O’Rear ‘626.
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.
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) (2008).

AFFIRMED

kmm

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