Ex Parte Pavoni et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10443095 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SILVIA PAVONI and VINCENZO CALEMMA
____________

Appeal 2009-003562
Application 10/443,095
Technology Center 1700
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Decided:1 June 24, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL2

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

2 Oral arguments were heard in this appeal on June 11, 2009.
Appeal 2009-003562
Application 10/443,095

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 23-43.3 (App. Br. 3). We have jurisdiction pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants describe a hydrocarbon composition useful as a fuel for
diesel or turbine engines including, inter alia, a hydrocarbon mixture
essentially without oxygenated organic compounds, obtained by a Fischer-
Tropsch reaction, having a distillation range of 130º to 380°C. (Spec. 7, ll.
3-18). Appellants also describe a method of improving the lubricating
properties of an engine fuel by adding the hydrocarbon mixture to an engine
fuel. (Spec. 19, ll. 2-11).
Claims 23 and 35, reproduced below, are representative of the subject
matter on appeal.
23. A hydrocarbon composition, capable of being used as fuel
for diesel or turbine engines, wherein at least 80% by weight of
said composition has a distillation range of from 150 to 380°C,
said composition consisting essentially of a mixture of the
following components:

(A) from 85 to 98% by weight with respect to the
overall weight of (A) and (B) of a refinery hydrocarbon
mixture having a distillation range of from 150 to 380°C,
and

(B) from 2 to 15% by weight with respect to the
overall weight of (A) and (B) of a hydrocarbon mixture

3 Claims 1-22 have been canceled. (Supplemental Appeal Brief filed April
10, 2008, hereinafter “App. Br.,” 1).
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essentially without oxygenated organic compounds,
obtained by means of a process comprising a synthesis
reaction of the Fischer-Tropsch type, having a distillation
range of 130 to 380°C, wherein at least 50% of said
component (B) is branched paraffins.

35. A method for improving the lubricating properties of an
engine fuel, comprising adding to said fuel, in a quantity
ranging from 1 to 25% by weight with respect to the fuel, a
synthetic hydrocarbon mixture essentially without organic
oxygenated compounds, obtained by a process comprising a
synthesis reaction of the Fischer-Tropsch type, having a
distillation range of 130 to 380°C.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wittenbrink US 6,274,029 B1 Aug. 14, 2001
Wittenbrink US 6,296,757 B1 Oct. 02, 2001
Wittenbrink US 6,607,568 B2 Aug. 19, 2003
Berlowitz US 6,663,767 B1 Dec. 16, 2003

The Examiner rejected claims 23-43 under 35 U.S.C. § 103(a) as
being unpatentable over each Wittenbrink patent4 independently and
Berlowitz.
In rejecting the appealed claims over Wittenbrink, the Examiner found
that Wittenbrink discloses synthetic diesel fuels having 0.001 to less than 0.3
weight % oxygen. (Examiner’s Answer entered June 19, 2008, hereinafter

4 Wittenbrink ‘568 is a divisional of Wittenbrink ‘029, which is a
continuation of Wittenbrink ‘757. Accordingly, we will refer to all three
patents collectively as “Wittenbrink,” with all citations to Wittenbrink ‘757.
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“Ans.,” 3). The Examiner stated that the 0.001 weight % of oxygenated
compounds disclosed in Wittenbrink meets the “essentially without
oxygenated organic compounds” requirement recited in the appealed claims.
(Ans. 5).
In rejecting the appealed claims over Berlowitz, the Examiner found
that Berlowitz discloses a Fischer-Tropsch derived hydrocarbon distillate in
a blend with a petroleum derived hydrocarbon distillate, where the Fischer
Tropsch distillate comprises 5-90 vol. % of the blend. (Ans. 4). The
Examiner also found that Berlowitz does not teach the addition of any
oxygenated compounds. (Ans. 6).
Appellants contend that Wittenbrink requires the presence of
oxygenated compounds and that the amount of oxygenated compounds
included in Wittenbrink is significant and detectable. (App. Br. 3).
Appellants argue that the amount of oxygenated compounds disclosed by
Wittenbrink is more than is allowed by the claims when the claims are
interpreted in light of the Specification. (Reply Brief filed August 19, 2008,
hereinafter “Rep. Br.,” 2).
Appellants contend that one skilled in the art would not have looked
to Berlowitz for solving the lubricating problem. (App. Br. 6). Appellants
also argue that there would have been no reason to prepare compositions
having the amount of hydrocarbon mixture recited in the claims because
Berlowitz prefers more then 30% of the Fischer-Tropsch derived
hydrocarbon distillate and exemplifies a composition with 50% Fischer-
Tropsch derived hydrocarbon distillate. (Id.).

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ISSUES
Have Appellants shown that the Examiner reversibly erred in
determining that a hydrocarbon composition including hydrocarbon mixture
(B) “essentially without oxygenated compounds” obtained by means of a
process comprising a synthesis reaction of the Fischer-Tropsch type would
have been obvious to one of ordinary skill in the art in view of Wittenbrink?
Have Appellants shown that the Examiner reversibly erred in
determining that a hydrocarbon composition including a hydrocarbon
mixture (B) “essentially without oxygenated compounds” obtained by means
of a process comprising a synthesis reaction of the Fischer-Tropsch type
present in the amounts recited in the claims would have been obvious to one
of ordinary skill in the art in view of Berlowitz?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states that in the hydrocarbon mixture
(B), the “content of oxygenated compounds is lower than the
minimum level which can be detected with the usual analytic
methods, such as IR or NMR spectroscopy and gas-mass
spectrometry.” (Spec. 10, l. 22 – 11, l. 2).
2. In a preparative Example, Appellants’ Specification discloses the
preparation of a synthesis gas oil for component (B) where the
oxygen content was “less than 0.001 wt %.” (Spec. p. 21, l. 19 – p.
22, l. 19).
3. Wittenbrink states:
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The amount of oxygenates present, as oxygen on a water free
basis is relatively small to achieve the desired lubricity, i.e., at
least about 0.001 wt % oxygen (water free basis), preferably
0.001-0.3 wt % oxygen (water free basis), more preferably
0.0025-0.3 wt% oxygen (water free basis).

(Col. 5, ll. 44-49).

4. Berlowitz describes a blend of a Fischer-Tropsch derived
hydrocarbon distillate and a petroleum derived hydrocarbon
distillate. (Col. 2, ll. 15-29).
5. Berlowitz discloses that in the Fischer-Tropsch derived distillate,
oxygenates may be produced, but that “oxygenate concentration[s]
are relatively low, and essentially nil after hydrotreatment.” (Col.
5, l. 58 – col. 6, l. 2).
6. Berlowitz discloses that the Fischer-Tropsch distillate may
comprise 5-90 vol. % of the blend. (Col. 2, ll. 42-43).

PRINCIPLES OF LAW
During prosecution, claims are given the broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is
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unlikely to be productive of the result sought by the
applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
It is well settled that “[m]ere recognition of latent properties in the
prior art does not render nonobvious an otherwise known invention.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
When the preamble of a method claim “in effect, states the result of
admixing [] two materials . . . [and] the references do not show a specific
recognition of that result, its discovery by appellants is tantamount only to
finding a property in the old composition.” In re Tomlinson, 363 F.2d 928,
934 (CCPA 1966) (emphasis in original).
It is a general rule that merely discovering and
claiming a new benefit of an old process cannot render the
process again patentable . . . While the processes
encompassed by the claims are not entirely old, the rule is
applicable here to the extent that the claims and the prior art
overlap.

In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations
omitted).
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 . . . These cases have
consistently held that in such a situation, the applicant must
show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.

Id.

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ANALYSIS
Appellants have not separately argued the dependent claims on
appeal. Accordingly, we confine our discussion to appealed claims 23 and
35, and claims 24-34 and 36-43 stand or fall with claims 23 and 35 pursuant
to 37 C.F.R. § 41.37(c)(1)(vii).5

Rejection of claims 23-43 as being unpatentable over Wittenbrink
We agree with the Examiner that “a synthetic hydrocarbon mixture
essentially without organic oxygenated compounds” as recited in the
appealed claims is met by the lower limit (about 0.001 wt %) of
Wittenbrink’s oxygenated compounds. We are not persuaded by
Appellants’ argument that in light of the Specification, the phrase
“essentially without organic oxygenated compounds” requires that no
detectable amount of oxygenated compounds is present in the hydrocarbon
mixture obtained from the Fischer-Tropsch reaction.
Appellants’ Specification discloses that the amount of organic
oxygenated compounds “is lower than the minimum level which can be
detected with the usual analytic methods, such as IR or NMR spectroscopy
and gas-mass spectrometry.” (FF 1). However, in the only preparative
Example for component (B), the Specification also discloses that the oxygen
content of component (B) is “less than 0.001 wt %.” (FF 2). Therefore,
giving the claims their broadest reasonable interpretation, we interpret
“essentially without organic oxygenated compounds” to include distillates

5 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
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having an oxygen content “less than 0.001 wt %.” There is no persuasive
evidence on the record that an oxygen content of “less than 0.001 wt %” is
tantamount to an oxygen content that is undetectable by the usual analytic
methods. To the contrary, Appellants argue that 0.001% by weight of
oxygen corresponds to an average percentage of alcohols C12-C18 in
Wittenbrink’s fuel of 0.014%, or 140 ppmw. (App. Br. 3). Thus,
Appellants’ claims may contain detectable amounts of oxygenated
compounds in the hydrocarbon mixture obtained from the Fischer-Tropsch
reaction. Therefore, we agree with the Examiner that “essentially without
organic oxygenated compounds” includes up to less than 0.001 wt %
oxygenated compounds, which overlaps the range disclosed in Wittenbrink
of “at least about 0.001 wt % oxygen.”
Regarding claim 35, Wittenbrink discloses adding a hydrocarbon
mixture obtained from a Fischer-Tropsch reaction to hydrocarbon fuels at
amounts within the recited range. The improvement in lubricity obtained by
Appellants is a result of mixing the two materials, and as such is analogous
to finding a property in an old composition.

Rejection of claims 23-43 as being unpatentable over Berlowitz
We are not persuaded by Appellants’ arguments that the recited
hydrocarbon composition and method for reducing lubricity would not have
been obvious over Berlowitz. Berlowitz specifically discloses that the
Fischer-Tropsch derived distillate is subjected to hydrotreatment such that
the oxygenated compound concentration is “essentially nil.” (FF 5).
Therefore, Berlowitz meets the requirement in the claims that the
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hydrocarbon mixture is “essentially without oxygenated organic
compounds.”
Regarding the amount of hydrocarbon mixture obtained from the
Fischer-Tropsch reaction present in the hydrocarbon composition, Berlowitz
discloses that the Fischer-Tropsch derived distillate is present in a range that
overlaps the ranges recited by Appellants in claims 23 and 35. (See FF 6).6
We also agree with the Examiner, that Berlowitz is not limited to the
preferred ranges or to the examples of the disclosure. (Ans. 6). In addition,
Appellants have failed to provide any results to support their contention that
the improvement in lubricity is only obtained when the hydrocarbon mixture
obtained by a Fischer-Tropsch reaction is present in the ranges recited in the
claims. Thus, Appellants have not shown that recited range is critical
through unexpected results.
Regarding claim 35, Berlowitz discloses adding a hydrocarbon
mixture obtained from a Fischer-Tropsch reaction to hydrocarbon fuels at
amounts within the recited range. Therefore, as discussed with respect to
Wittenbrink, the improvement in lubricity obtained by Appellants is a result
of mixing the two materials, and as such is analogous to finding a property
in an old composition.

6 Appellants do not argue that the range disclosed by Berlowitz “is so broad
as to encompass a very large number of possible distinct compositions.” In
re Peterson, 315 F.3d 1325, 1330 n. 1 (Fed Cir. 2003). Therefore, we do not
reach whether the disclosed range presents a situation analogous to a genus
species relationship vis-à-vis the recited range. Id., cf. In re Harris, 409
F.3d 1339, 1342-43 (Fed. Cir. 2005).
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CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that a hydrocarbon composition including hydrocarbon
mixture (B) “essentially without oxygenated compounds” obtained by means
of a process comprising a synthesis reaction of the Fischer-Tropsch type
would have been obvious to one of ordinary skill in the art in view of
Wittenbrink.
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that a hydrocarbon composition including a
hydrocarbon mixture (B) “essentially without oxygenated compounds”
obtained by means of a process comprising a synthesis reaction of the
Fischer-Tropsch type present in the amounts recited in the claims would
have been obvious to one of ordinary skill in the art in view of Berlowitz.

ORDER
We affirm the Examiner’s decision rejecting claims 23-43 under 35
U.S.C. § 103(a) as being unpatentable over the Wittenbrink patents of
record.
We affirm the Examiner’s decision rejecting claims 23-43 under 35
U.S.C. § 103(a) as being unpatentable Berlowitz.

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)(v).
AFFIRMED

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ssl

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314

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