Ex Parte Ortega et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11166029 (B.P.A.I. Sep. 22, 2010)

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.
11/166,029 06/23/2005 Pedro Ortega 02-795 5357
34704 7590 09/22/2010
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
MRUK, BRIAN P
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/22/2010 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 PEDRO ORTEGA,
MANUEL COLINA, and RAFAEL FERNÀNDEZ
________________

Appeal 2009-014116
Application 11/166,029
Technology Center 1700
________________

Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, 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.
Appeal 2009-014116
Application 11/166,029

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A. Introduction2
Pedro Ortega, Manuel Colina, and Rafael Fernàndez (“Ortega”)
timely appeal under 35 U.S.C. § 134(a) from the final rejection3 of claims 1
and 4-8.4 We have jurisdiction under 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to a composition useful for the
desalting of hydrocarbons. The 029 Specification explains that the removal
of salt from hydrocarbons is an important step in the refining process.
(Spec. 1 [0002].) A method of doing this is to form an emulsion of the
hydrocarbon with an aqueous phase, whereupon the salts transfer to the
aqueous phase, and then to break the emulsion, “so that the removal of the
water phase removes salt as well.” (Id.) The invention is said to provide
biodegradable, non-toxic compositions to break the oil-water emulsions.
(Id. at [0005].)
Representative Claims 1 and 8 read:
1. A composition for desalting a hydrocarbon from a
hydrocarbon emulsion, comprising:
a hydrophilic gel component comprising
prehydrated polyanionic cellulose; and
a polyoxyalkene ethoxylated surfactant component
comprising
a polyoxypropylene ethoxylated surfactant,

2 Application 11/166,029, Desalting of Hydrocarbons, filed 23 June 2005.
The specification is referred to as the “029 Specification,” and is cited as
“Spec.” The real party in interest is listed as Intevep, S.A. (Appeal Brief,
filed 22 December 2008 (“Br.”), 2.)
3 Office action mailed 1 May 2008 (“Final Rejection,” cited as “FR”).
4 Claims 9-16 have been withdrawn from consideration. (FR 1).
Appeal 2009-014116
Application 11/166,029

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wherein the hydrophilic gel component provides
water affinity to drain water droplets from the
emulsion, and
the polyoxyalkene ethoxylated surfactant component
provides driving force to modify interfacial properties
of the emulsion and to break same.
(Claims App., Br. 12; indentation and paragraphing added.)
8. The composition of claim 1, wherein the surfactant
component has a structure as follows:
HO-[CH2- CH2-O]n-[CH2-CH(CH3)-O]m-[CH2- CH2-O]nH
(Claims App., Br. 13; formula re-typed.)
The Examiner has maintained the following grounds of rejection:5
A. Claim 8 stands rejected under 35 U.S.C. § 112(2) as being
indefinite in the variables “n” and “m.”
B. Claims 1 and 4-8 stand rejected under 35 U.S.C. § 102(b) or under
35 U.S.C. § 103(a) in view of Wu.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
We REVERSE for the reasons given by Ortega in the Brief and
Reply,7 adding the following for emphasis.

5 Examiner’s Answer mailed 30 March 2009 (“Ans.”).
6 An-Ming Wu and Jay Brockhoff, Emulsified Polymer Drilling Fluid and
Methods of Preparation and Use Thereof, U.S. Application Publication
US 2004/0116304 A1 (17 June 2004), based on an application
filed 28 November 2003.
7 Reply Brief, filed 1 June 2009 (“Reply”).
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Application 11/166,029

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The Examiner maintains that a person having ordinary skill in the art
would not know what are the metes and bounds of the variables “n”
and “m.” (Ans. 3.) The Examiner does not explain, however, why the
ordinary chemist would have any difficulty understanding what the chemical
formula encompasses. The formula, reproduced supra, uses ordinary
chemical symbols and notations. The Examiner has not directed our
attention to any disclosure in the 029 Specification that indicates that Ortega
is using the symbols and notations in an idiosyncratic way that is somehow
at odds with standard chemical practice. We conclude that the Examiner’s
rejection for indefiniteness is without basis and without merit.
The Examiner maintains that the compositions disclosed by Wu
“would be capable of breaking an emulsion, since the composition . . .
contains the two components required in the instant invention to break an
emulsion.” (Ans. 5, 1st full para.) In this regard, the recitation of the
functions of the hydrophilic gel and of the surfactant components in the
body of the claim emphasize that the “intended use” of desalting a
hydrocarbon from a hydrocarbon emulsion is a capability that the
compositions covered by the claims must have. Cf. In re Paulson, 30 F.3d
1475, 1479 (Fed. Cir. 1994) (“Although no ‘litmus test’ exists as to what
effect should be accorded to words contained in a preamble, review of a
patent in its entirety should be made to determine whether the inventors
intended such language to represent an additional structural limitation or
mere introductory language.”) (internal quotation and citation omitted). The
Examiner does not, however, direct our attention to any credible evidence of
record that indicates that compositions disclosed by Wu would perform as
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Application 11/166,029

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emulsion breakers, even if they contained equal amounts of polyanionic
cellulose and an ethylene oxide polypropylene oxide block copolymer. On
the contrary, in Wu’s words, “the invention is a water-based polymer drilling
mud which emulsifies all or a substantial portion of the oil and bitumen
contained in oil sand cuttings, resulting in the oil and bitumen being
dispersed into the mud as an emulsion.” (Wu 3 [0024]; emphasis added.)
As Ortega argues, Wu teaches a drilling fluid that makes an emulsion of the
oil in water, not breaking an emulsion.
The Examiner has not directed our attention to any example disclosed
by Wu that appears to break an emulsion. The effect of the additional
viscosity components disclosed by Wu cannot be ignored. As Judge Rich,
writing for the predecessor to our reviewing court wrote nearly half a
century ago, “[f]rom the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing.” In re Papesch,
315 F.2d 381, 391 (CCPA 1963).
C. Order
We REVERSE the rejection of claim 8 under 35 U.S.C. § 112(2).
We REVERSE the rejection of claims 1 and 4-8 under
35 U.S.C. § 102(b) or 35 U.S.C. § 103(a) in view of Wu.
REVERSED

Appeal 2009-014116
Application 11/166,029

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900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510