Ex Parte Nikanjam et al

Patent Trials and Appeals Board

Feb 27, 2019

14457711 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/457,711 08/12/2014
14322 7590 03/01/2019
Michael E. Carmen, Esq.
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
FIRST NAMED INVENTOR
Manuch Nikanjam
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
T-9575 4360
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyoffice@rml-law.com
mec@rml-law.com
bmg@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANUCH NIKANJAM and THOMAS GREGORY SMAGALA
Appeal2017-007034
Application 14/457,711
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of claims
6-10. Claims 1-5 have been cancelled. Oral argument in this appeal was
waived on February 13, 2019. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a method of reducing fuel injector
deposits in a direct injection diesel engine using a fuel composition that
includes an amine-phenolic resin where the fuel composition contains no
1 According to the Appeal Brief, the real party in interest is listed as
"Chevron U.S.A. Inc." (App. Br. 2).
Appeal2017-007034
Application 14/457,711
more than 30 ppm of active detergent additive, or active dispersant additive
or mixtures thereof (Claim 6; Spec. 1: 11-13).
Claim 6 is illustrative:
A method of reducing fuel injector deposits in a direct
injection diesel engine comprising supplying a fuel composition
comprising a major amount of hydrocarbons boiling in the diesel
range and an effective fuel injector deposit-controlling amount
of at least one stability additive, wherein the stability additive is
an amine-phenolic resin and further wherein the fuel composition
contains no more than 30 ppm of active detergent additive or
active dispersant additive or mixtures thereof to a direct injection
diesel engine.
Appellants appeal the following rejection:
Claims 6-10 are rejected under 35 U.S.C. § 103 as unpatentable over
Arters (US 2013/0192124 Al, published Aug. 1, 2013) in view of Sabahi
(US 8,455,414 B2, issued June 4, 2013) (Final Act. 5-6).
Appellants' arguments focus only on the subject matter of claim 6
(App. Br. 4--8).
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Arters and Sabahi
are located on pages 5 to 6 of the Final Action. The Examiner finds that
Arters teaches using a nitrogen-free additive to treat fuel in a direct injection
diesel engine (Final Act. 5). The Examiner finds that Arters teaches that
other additives such as an antioxidant may be used in the fuel composition
(Final Act. 6). The Examiner finds that Sabahi teaches an antioxidant that
may be used in diesel fuel to prevent oxidation (Final Act. 5, see also id. at
3--4 ). The Examiner finds that Sabahi teaches antioxidant amounts in the
diesel fuel from 1 to 1000 ppm and more preferably from 10 to 500 ppm
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Application 14/457,711
(Final Act. 3-4). The Examiner concludes that it would have been obvious to
use Sabahi's known fuel antioxidant as the macromolecular amine-phenolic
compositions having oxidation inhibition characteristics in Arters' fuel
compositions (Final Act. 6).
Appellants argue that Arters adds detergents, and thus, one of ordinary
skill in the art reading Arters would not have been led to expect that fuel
injector deposits could be surprisingly reduced in direct injection diesel
engines by using an amine-phenolic resin additive and employing little or no
active detergent additives (App. Br. 5). Appellants contend that there is no
reason to combine Sabahi's amine-phenolic resin antioxidant additive with
compositions disclosed in Arters, because Sabahi does not teach that the
antioxidant additive can reduce fuel injector deposits in a direct injection
diesel engine (App. Br. 6). Appellants argue that the Examiner's rejection is
based on impermissible hindsight (App. Br. 7). Appellants contend that the
method of using the antioxidant to reduce fuel injector deposits patentably
distinguishes over the prior art that does not recognize that property of the
antioxidant (App. Br. 6-7).
Claim 6 recites a method of reducing fuel injector deposits in a direct
injection engine comprising supplying a fuel composition comprising a
major amount of hydrocarbons boiling in the diesel range and an effective
fuel injector deposit-controlling amount of at least one stability additive
which is an amine-phenolic resin and further wherein the fuel composition
contains no more than 3 0 ppm of an active detergent additive or active
dispersant additive or a mixture thereof. The Specification defines stability
as including but not limited to "thermal stability, storage stability, oxidative
stability and the like." (Spec. 3:31--4:1). The amount of stability additive
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Application 14/457,711
needed for best results, that is the amount needed to control effectively fuel
injector deposits, is generally from 10 to 200 ppm weight (mg active
additive/kg diesel fuel) but that amount will vary depending on type of fuel
and other additives employed (Spec. 4:22-28). The claim also requires that
the fuel composition includes less than 30 ppm of detergent and/or
dispersant.
Arters teaches a fuel composition including a nitrogen-free additive
that may be present in a concentration of less than 100 ppm (Arters ,r 19).
Arters describes the nitrogen-free additive as a deposit control additive for
diesel engines (Arters ,r,r 37, 9). Arters teaches that the fuel composition
may include antioxidants (Arters ,r 65). Sabahi teaches an amine-phenolic
resin useful as an antioxidant in a diesel fuel composition (Sabahi, col. 2, 11.
40-56; col. 10, 11. 15-18). Sabahi's antioxidant is used in a liquid fuel
composition in an amount of0.0001 to about 0.1 wt% (i.e., 1 to 1000 ppm)
and more preferably in a range from 0.001 to about 0.05 wt% (i.e., 10 to 500
ppm) (Sabahi, col. 10, 11. 44--49). Sabahi teaches that dispersants and
detergents may be used in the composition (Sabahi, col. 10, 11. 15-25).
The combined teachings of Sabahi and Arters would have suggested a
diesel fuel composition having an amine-phenolic antioxidant and less than
30 ppm of detergent and/or dispersant that is used in a direct injection diesel
engine. As noted above, each of Sabahi and Arters discloses a diesel fuel
composition that may include antioxidants and detergents. Sabahi and
Arters each teaches detergent amounts that overlap with the claimed range of
not more than 30 ppm detergent and/or dispersant. Sabahi teaches a fuel
composition having an antioxidant concentration (i.e., 10 to 500 ppm) that
overlaps with the range disclosed by Appellants in the Specification as an
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Application 14/457,711
effective fuel-injector controlling amount (i.e., 10 to 200 ppm). The overlap
in the ranges renders the claimed range prima facie obvious. In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). In other words, the combined
teachings would have rendered obvious a method that includes using a diesel
fuel composition that includes an antioxidant and detergent and/or dispersant
in amounts required by claim 6.
Appellants' argument that the prior art does not teach using the
antioxidant to reduce fuel injector deposits is not persuasive. The prior art
does not need to be combined for the same reason that Appellants made their
invention. KSR Int 'l Co. v. Teleflex Inc., 550 US 398, 420 (2007) ("The first
error of the Court of Appeals in this case was to foreclose this reasoning by
holding that courts and patent examiners should look only to the problem the
patentee was trying to solve."). Rather, "any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed." Id.
Under the correct obviousness analysis, the prior art teaches that
antioxidants and low levels of detergent may be used in a diesel fuel
composition. Those teachings are sufficient for combining Sabahi's
antioxidant with Arters' diesel fuel composition in the claimed method. The
claimed result of reducing fuel injector deposits by using an amine-phenolic
antioxidant would have flowed naturally from the combination. Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985), affmd In re Obiaya, 795 F.2d 1017
(Fed. Cir. 1986). This determination follows because the prior art teaches
using the antioxidant and detergent and/or dispersant in amounts within the
ranges recited in the claims and disclosed in the Specification. The
Examiner's combination is not based upon impermissible hindsight as
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Application 14/457,711
argued by Appellants. Rather, the prior art would have suggested the
combination for the reasons discussed above.
On this record, we affirm the Examiner's§ 103 rejection over Arters
in view of Sabahi.
DECISION
The Examiner's decision 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)(l )(iv).
ORDER
AFFIRMED
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