Ex Parte Null

Board of Patent Appeals and Interferences

Jun 12, 2012

11920474 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/920,474 11/15/2007 Volker Klaus Null TS9554US 7985
23632 7590 06/12/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
06/12/2012 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 VOLKER KLAUS NULL
____________

Appeal 2011-006957
Application 11/920,474
Technology Center 1700
____________

Before TERRY J. OWENS, ROMULO H. DELMENDO, and
MARK NAGUMO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006957
Application 11/920,474

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Volker Klaus Null, the Appellant,1 seeks our review under 35 U.S.C.
§ 134(a) of a final rejection of claims 1-10.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to a polystyrene or styrene copolymer
composition comprising a Fischer-Tropsch process derived white oil having
a specified kinematic viscosity at 100 ºC. Specification (“Spec.”) at 3, ll. 3-
10. The Fischer-Tropsch derived oil is said to act as a plasticizer in the
composition, and the claimed compositions are said to be useful as a clear
(i.e., non-fogging) polystyrene molding material. Id. at 3, ll. 1-2 and 4,
ll. 5-7.
Claim 1 on appeal is reproduced below:
1. A polystyrene composition or styrene copolymer
composition comprising a Fischer-Tropsch derived white oil,
wherein the Fischer-Tropsch derived white oil has a kinematic
viscosity at 100 °C of in between more than 2 mm2/s and less
than 7 mm2/s, as determined according to ISO 3014.
Br. 5 (Claims App’x).
The Examiner rejected the claims as follows:
I. Claims 1-4 and 6-10 under 35 U.S.C.
§ 102(b) as anticipated by a published

1 The Appellant states that the real party in interest is Shell Oil Company.
Appeal Brief filed September 7, 2010 (“Br.”) at 2.
2 Br. 2; Final Office Action mailed March 8, 2010.
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Application 11/920,474

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United States Application in the name of
Null;3 and
II. Claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Null.
Examiner’s Answer mailed November 19, 2010 (“Ans.”) at 3-6.

ISSUES
The Appellant relies on the same arguments for both rejections. Br. 2-
3. In addition, the Appellant has argued the claims together. Id.
Accordingly, we select claim 1 as representative of the claims rejected in
each of the two rejections and confine our discussion to this selected claim.
The other claims subject to the rejections stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii).

The Examiner’s Position
The Examiner found that the Null publication, ¶¶ [0004] and [0014],
describes every limitation of claim 1. Ans. 3. Specifically, the Examiner
found that the Null publication describes a polystyrene or styrene copolymer
composition comprising a medicinal or technical white oil as plasticizer,
wherein the oil comprises a Fischer-Tropsch derived white oil having a
kinematic viscosity at 100 ºC between 2 mm2/s and 30 mm2/s. Id. The
Examiner found that the range disclosed in the prior art anticipates the
claimed range of “between more than 2 mm2/s and less than 7 mm2/s.” Id.
As to the Appellant’s allegation that the claimed range provides improved

3 U.S. Patent Application Publication 2004/0014877 A1published January
22, 2004.
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Application 11/920,474

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results in terms of reduced fogging, the Examiner held that a showing of
improved results is not relevant when the prior art anticipates the claimed
subject matter. Id. at 7.
Regarding obviousness, the Examiner concluded that “[i]t would have
been obvious to one of ordinary skill in the art . . . to operate at virtually any
viscosity value within the disclosed range with a reasonable expectation of
success.” Id. at 5. The Examiner found the proffered showing of
unexpected results unpersuasive because it was “not commensurate in scope
with the claims in terms of specific amounts and component species.” Id. at
7.

The Appellant’s Position
The Appellant argues that the compositions described in the Null
publication include a white oil preferably having a kinematic viscosity of
more than 7 mm2/s and more preferably above 8.5 mm2/s, primarily because
it is a legal requirement for direct food contact applications in Europe. Br. 3.
The Appellant further contends that “[t]he only example provided in the
reference discloses a Fischer-Tropsch derived medicinal white oil having a
kinematic viscosity at 100 °C of 11.11 mm2/s.” Id. According to the
Appellant, “improved fogging behavior [i.e., reduced turbidity] results when
the polystyrene compositions contain a Fischer-Tropsch derived white oil
which [h]as a kinematic viscosity in between more than 2 and less than 7
mm2/s.” Id. The Appellant thus “asserts that the claimed range is a narrow
selection over the disclosure of Null and is far removed from the preferred
embodiments of the range disclosed in that reference.” Id.
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The dispositive issues arising from these contentions are:
(1) Does the Null publication describe every limitation of claim 1
within the meaning of 35 U.S.C. § 102(b)?
(2) Assuming, arguendo, that the Null publication does not
anticipate claim 1, does the evidence support the Examiner’s conclusion that
a person of ordinary skill in the art would have formulated the prior art
composition to include a Fischer-Tropsch derived white oil having a
kinematic viscosity within the claimed range of more than 2 mm2/s and less
than 7 mm2/s?
(3) Did the Appellant come forward with persuasive evidence of
unexpected results sufficient to support the scope of claim 1?

DISCUSSION
We agree with the Examiner on all issues.
A claim reciting a numerical range is not anticipated by a prior art
reference where the disclosed prior art range constitutes a broad genus
relative to the claimed range and the evidence shows that the claimed range
is critical relative to the prior art range. ClearValue, Inc. v. Pearl River
Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012) (explaining Atofina v.
Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2005)). On the other
hand, a broader prior art range may anticipate a narrower claimed range
where the evidence lacks a showing of criticality for the claimed range (i.e.,
where the evidence is insufficient to demonstrate that the claim reciting a
narrower range is a different invention from the considerably broader prior
art range). ClearValue, 668 F.3d at 1344, 1345 (prior art disclosure of
clarifying water with an alkalinity of 150 ppm or less constitutes a
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description of a process of clarifying water with “a raw alkalinity less than
or equal to 50 ppm” where “there is no allegation of criticality or any
evidence demonstrating any difference across the range” (emphasis
omitted)).
As pointed out by the Examiner, the Null publication describes a
polystyrene composition or styrene copolymer composition comprising a
medicinal or technical white oil as plasticizer, wherein the oil is derived
from a Fischer-Tropsch process. ¶ [0004]. The Null publication states that
the medicinal white oil derived from the Fischer-Tropsch process may have
a kinematic viscosity at 100 ºC between 2 mm2/s and 30 mm2/s. ¶ [0014].
The Null publication further teaches that if the composition is used for food
applications, the kinematic viscosity is “[m]ore preferably . . . above 7
mm2/s and most preferably above 8.5 mm2/s.” ¶ [0014]. In this regard, the
Appellant acknowledges that the teaching in the Null publication regarding
the preferred ranges is “primarily because it is a legal requirement for direct
food contact applications in Europe.” Br. 3. Additionally, the Null
publication teaches that the upper limit for the kinematic viscosity is
“preferably below 15 mm2/s because at higher viscosities the oil becomes
less compatible with the polystyrene or styrene copolymer composition.”
¶ [0014].
The Appellant argues that the claimed range is “far removed” from
the preferred ranges disclosed in the reference. Br. 3. But, as acknowledged
by the Appellant, the preference in the prior art is dictated primarily by
European standards if the composition is used for food applications. Where
the prior art compositions are to be used outside of Europe or used for non-
food applications, the preferred ranges carry less significance. More
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importantly, we think that the Null publication describes kinematic viscosity
values between 2 and 7 mm2/s with sufficient specificity, and the additional
disclosure in the reference of preferred ranges outside the claimed range for
particular applications does not nullify the disclosure that anticipates claim
1.
When the compatibility of the oil with the styrene polymer is taken
into account, the finding of anticipation is even more compelling because the
prior art range (between 2mm2/s and 15 mm2/s) does not significantly
deviate from the Appellant’s claimed range of between 2 and 7 mm2/s.
Indeed, the Appellant’s claim attempts to patent a significant portion (almost
half) of what was disclosed in the prior art and therefore already in the
public domain.
As evidence of criticality for the claimed kinematic viscosity range,
the Appellant relies on the experiments described in the examples of the
Specification. Br. 3. These experiments are summarized in Tables 1 and 2,
reproduced below:
App
App

Tabl
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06957
/920,474
summarize
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claimed range (FT1-FT3) and one having a kinematic viscosity outside the
claimed range (FT4). Table 2 above tabulates the visual turbidity ratings of
FT1-FT4 when formulated into compositions containing styrene polymers.
Spec. 22-23.
Specifically, white oils FT1, FT2, and FT3 had kinematic viscosities
of 4.3, 5.1, and 5.5 mm2/s, while white oil FT4 had a kinematic viscosity of
9.1 mm2/s. When formulated into a polystyrene composition, even the use
of white oils having viscosities within the claimed range (FT1-FT3) resulted
in a turbid visual rating at 4.5% white oil. At 4.0% white oil, FT2 and FT3
resulted in “Hazy” or “Turbid” ratings. At 3.5% white oil, FT3 resulted in a
“Hazy” rating.
In this case, the visual turbidity ratings summarized in Table 2 of the
Specification demonstrate that the showing, even if accepted as evidence of
results that would have been considered unexpected by one of ordinary skill
in the art, is not commensurate in scope with claim 1. At 4.0% and 4.5%,
white oils having kinematic viscosities within the claimed range were no
better in terms of turbidity than a white oil with a kinematic viscosity outside
the claimed range. Claim 1, however, fails to recite any limitation on the
amount of the white oil. Furthermore, Table 1 shows that variables other
than kinematic viscosity such as density, flash point, and content of
hydrocarbons were varied, and thus, it is not possible to attribute the alleged
criticality to the claimed range of kinematic viscosity. Thus, we discern no
error in the Examiner’s finding that the proffered evidence is unpersuasive
of unexpected results commensurate in scope with the claims.
We therefore find that the Null publication describes every limitation
of claim 1, including the recited kinematic viscosity, with sufficient
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Application 11/920,474

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specificity to anticipate the claim. Unlike Atofina, but as in ClearValue, the
prior art range is not as broad relative to the claimed range and the proffered
evidence fails to demonstrate an unexpected criticality.
For these reasons, we uphold the Examiner’s anticipation rejection.
We also uphold the obviousness rejection because, even if the prior art
disclosure is insufficient to anticipate, a person of ordinary skill in the art
would have found it obvious to use a white oil having a kinematic viscosity
between 2 and 7 mm2/s in view of the explicit teachings of the reference.
Absent sufficient evidence of unexpected results commensurate in scope
with the claim, the obviousness rejection is not overcome.
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)(iv).

AFFIRMED

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