Ex Parte Rojas et al

Board of Patent Appeals and Interferences

Jan 9, 2009

11121269 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEJANDRO MARKOVITS ROJAS,
ANDRES MARKOVITS SCHERSL, and
MIGUEL ANGEL DIAZ
____________

Appeal 2008-5362
Application 11/121,269
Technology Center 1700
____________

Decided: January 8, 2009
____________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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STATEMENT OF THE CASE
The invention relates to a process for obtaining high quality fatty
acids and rosin acids from crude tall oil through short path distillation of
saponified crude tall oil. (Spec. 2, ¶ 2). Through short path distillation,
unsaponifiable material is more effectively removed, providing for improved
fatty acid recovery. (Spec. 8, ¶ 3). Claim 1 is illustrative of the subject
matter on appeal:
1. A process for the production of fatty acids and rosin acids from
crude tall oil comprising the steps:

(a) saponifying crude tall oil with sodium or potassium hydroxide
or with an aqueous solution of sodium or potassium hydroxide
to form saponified crude tall oil comprising unsaponifiable
matter, sodium or potassium soaps of fatty acids and rosin acids
and 40 % in weight or less of water;

(b) dehydrating saponified crude tall oil to form dehydrated
saponified crude tall oil;

(c) distilling dehydrated saponified crude tall oil in a short path
distillation column to form a distillate comprising
unsaponifiable matter and a residue comprising sodium or
potassium soaps of fatty acids and rosin acids;

(d) contacting the residue of step c) with sulfuric acid to form
refined tall oil comprising fatty acids and rosin acids and an
aqueous solution comprising sodium or potassium sulfate;

(e) separating the refined tall oil of step d) from the aqueous
solution, and

(f) vacuum fractionating the refined tall oil of step e) to form a first
fraction comprising fatty acids and a second fraction
comprising rosin acids.

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The Examiner relies on the following prior art references to show
unpatentability:
Harada et al. US 4,076,700 Feb. 28, 1978
Huibers et al. US 5,286,845 Feb. 15, 1994
Aitta et al. US 5,898,065 Apr. 27, 1999
Boldea et al. US 6,623,914 B2 Sep. 23, 2003

The Examiner maintains the following rejection:
1. Claims 1-13 rejected under 35 U.S.C. § 103(a) as obvious over
Harada et al. (“Harada”) in view of Aitta et al. (“Aitta”), as evidenced by
Huibers et al. (“Huibers”) and Boldea et al. (“Boldea”).
Since no claims are argued separately from the others, we decide this
Appeal on the basis of representative independent claim 1. 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.”).
II. FIRST ISSUE
A. ISSUE ON APPEAL
Appellants do not contest the Examiner’s finding of the particular
steps of the claimed invention in the teachings of Harada. Rather,
Appellants first distinguish the teachings of Harada on the basis that Harada
teaches a different starting material (tall oil skimming soap) than the claimed
invention (crude tall oil). (App. Br. 11-15).
The Examiner contends that it would have been obvious to one of
ordinary skill in the art to use the crude tall oil prepared by the process
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taught by Aitta as the starting material in the process taught by Harada.
(Ans. 5-6).
Thus, a first issue on appeal arising from the contentions of
Appellants and the Examiner is: would it have been obvious to one of
ordinary skill in the art to use crude tall oil as a starting material for the
recovery of fatty acids and rosin acids using the process taught by Harada?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are directed to the above
identified issues on appeal:
1. Harada teaches a general process for recovering fatty acids and
rosin acids from tall oil skimming soap that includes, among other things, a
first stage distillation 7, where light unsaponifiable matter and water 8 are
removed from the saponified tall oil skimming soap 4, and a second stage
distillation 13, where heavy unsaponifiable matter is removed from the dried
saponified tall oil skimming soap. (See Harada, col. 6, l. 41 to col. 7, l. 15).
2. Example 3 of Harada teaches the recovery of fatty acids and
rosin acids starting with tall oil. (Harada, col. 15, l. 55 to col. 16, l. 23).
3. Example 3 includes the removal of water and light
unsaponifiable material using a thin film evaporator, but does not include a
second “distillation step” for the removal of heavy unsaponifiable materials.
(Harada, col. 15, l. 64 to col. 16, l. 8).
4. Harada additionally recognizes that “[a]s an extra effect of this
invention, it is possible according to this invention to obtain dry soaps from
the tall oil skimming soap and to obtain rosin acid and fatty acids by
transforming dry soaps into tall oil by using sulfuric acid and distilling the
same.” (Harada, col. 9, ll. 61-65).
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5. Harada teaches a process that includes first treating a tall oil
skimming soap with a disproportionating catalyst and an alkali, drying the
tall oil skimming soap, converting the tall oil skimming soap to crude tall oil
with sulfuric acid and then distilling “according to the process of this
invention” to obtain disproportionated rosin acids and isomerized fatty acids.
(Harada, col. 10, l. 62 to col. 11, l. 6.
6. Harada teaches that “[t]hese results [from Example 3] indicate
excellent adaptability of the present invention to recovery of rosin acid and
fatty acid from tall oils” using “conventional tall oil distillation equipment”
and without “the fatty acid rectifying step.” (Harada, col. 17, ll. 53-60).
7. Harada teaches that using the present invention to recover fatty
acids and rosin acids from tall oils has the advantages of “curtailment of the
required utilities, improvement of the throughput capacity of the apparatus,
alleviation of the pollution problem owing to limited by-products, and
improvement of the product quality.” (Harada, col. 17, ll. 55-64).
8. Harada, Huibers, the background of Appellants’ Specification
and Appellants’ submission as Exhibit 2, entitled “Tall Oil Production and
Processing” (hereinafter “Appellants’ Exhibit 2”), all recognize that fatty
acids and rosin acids are conventionally recovered in processes in which tall
oil skimming soap is first converted to crude tall oil. (Harada, col. 1, ll. 20-
30; Huibers, col. 1, ll. 62-68 and col. 8, ll. 9-36; Spec. 2, ¶ 2 to 4, ¶ 3;
Appellants’ Exhibit 2, p. 5, ¶ 1 to p. 9, ¶ 6 (Steps 1-3)).
9. Harada teaches that “[t]he contents of rosin acid and fatty acids
in the tall oil are usually indicated by their acid values” and a “[d]istillation
of tall oils with a lower acid value results in . . . a reduction in recovery of
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rosin acid and fatty acids [among other things].” (Harada, col. 2, ll. 17-18
and 29-34).
10. Aitta teaches a process for converting tall oil skimming soap to
crude tall oil by neutralizing the tall oil skimming soap with carbon dioxide,
followed by reacting the neutralized tall oil skimming soap with an
acidically reacting substance which is not sulfuric acid alone. (Aitta, col. 1,
ll. 59-63).
11. The crude tall oil produced by the Aitta process has a lower
water content and a higher acid number than a process that converts tall oil
skimming soap to crude tall oil using only sulfuric acid. (Aitta, col. 2, ll. 41-
46).
12. In particular, Aitta teaches two examples of crude tall oil
having water contents of lower than 4.7% and lower than 1.7%, respectively.
(Aitta, col. 3, ll. 23-25 and 32-34).
13. The Specification describes that tall oil skimming soap as a
starting material, as taught by Harada, is undesirable because of the high
water content, which causes excessive foaming and flashing in the
evaporator. (Spec. 5-6).
14. The Declaration of Alejandro Rojas, dated December 19, 2006
(hereinafter “the Declaration”), states that “the high water content of the tall
oil skimming soaps of Harada made it impossible to utilize a short path
evaporator.” (Decl., ¶ 9).
15. The Declaration states that “[a]s one skilled in the art would
understand, the lower water content of crude tall oil is one of the differences
in the physical and chemical characteristics of tall oil skimming soaps and
crude tall oil.” (Decl., ¶ 11).
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16. The Declaration states that “[a]s one skilled in the art would
understand, the large amount of water in the tall oil skimming soaps are
known to cause foaming and flashing in the thin film evaporator which
would also be evident in a short path evaporator. The foaming and flashing
commonly reaches the condenser causing blocking.” (Decl., ¶ 10).
17. Harada teaches disadvantages of using tall oil skimming soap,
specifically in transporting tall oil skimming soap. (Harada, col. 2, ll. 51-58).
18. Harada also teaches that the soaps “will not melt and not flow
down gravitationally” in the evaporator and “will deposit on the heating
surfaces” or “will form thin films with an increased viscosity and will
scarcely flow down, making it impossible for the evaporator to carry out its
normal function,” thus requiring a thin film evaporator with a narrow
clearance “capable of forcing down or scraping off the soapy deposits.”
(Harada, col. 5, ll. 6-32).
19. Appellants acknowledge these disadvantages to using the high
water content tall oil skimming soap as a starting material in the process of
Harada. (See App. Br. 13-14; Spec. 5-6).
C. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
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prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807
(Fed. Cir. 1989). Disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
D. ANALYSIS
Harada includes broad teachings for using the “process of the
invention” starting with tall oil instead of tall oil skimming soap. (FF 4-6).
Harada even notes the advantages of starting with tall oil, rather than tall oil
skimming soap. (FF 7). The “process of the invention,” as reflected in
Figure 1, clearly includes a second distillation step for the removal of heavy
saponifiable matter (i.e., the “distillation” step claimed). (FF 1). Likewise,
Example 3 of Harada specifically teaches the recovery of fatty acids and
rosin acid directly from tall oil, rather than tall oil skimming soap. (FF 2).
While we recognize that the particular process in Example 3 does not
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include a second distillation step for the removal of heavy saponifiable
materials (FF 3), Example 3 does not detract or teach away from the broader
teachings of Harada, which includes using tall oil as a starting material in a
process that also includes a second distillation step to remove the heavy
unsaponifiable matter. Merck, 874 F.2d at 807; Susi, 440 F.2d at 446 n.3.
Thus, one of ordinary skill in the art having the teachings of Harada would
have been motivated and would have had a clear expectation of success
using tall oil, rather than tall oil skimming soap, as a starting material in the
process of Harada.
Further, there is no question that one of ordinary skill in the art would
have been motivated to use the process taught by Harada using tall oil as the
starting material, rather than tall oil skimming soap, since it was well-known
in the art that crude tall oil is the conventional starting material for the
recovery of fatty acids and rosin acids. (FF 8). The use of crude tall oil as a
starting material would have been no more than the predictable use of crude
tall oil according to its established function (i.e., the starting material for the
recovery of fatty acids and rosin acids). KSR, 127 S. Ct. at 1740.
Although we need not reach the teachings of Aitta to establish
obviousness,1 Aitta teaches the production of a crude tall oil that has a
particularly high acid number and low water content. (FF 10-12). Thus, one
of ordinary skill in the art would have been motivated to use the crude tall
oil recovered by the process of Aitta, over a crude tall oil recovered by a

1 We also find it unnecessary to address Appellants’ arguments directed
towards the motivation to combine the teachings of Huibers and Boldea with
Harada. The Examiner makes no such combination, but only tangentially
relies on the teachings of Boldea and Huibers to explain the teachings of
Harada.
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conventional process using sulfuric acid, in the process taught by Harada,
since a higher acid number means a higher content of rosin acids and fatty
acids that can be recovered. (FF 9).
Appellants have provided no rationale as to why one of ordinary
skill in the art would not have used crude tall oil, rather than tall oil
skimming soap, in the process taught by Harada. (See generally App. Br.).
Rather, Appellants base their arguments on the fact that tall oil skimming
soap and crude tall oil are meaningfully different starting materials and are
chemically different. (App. Br. 11). We acknowledge the differences in the
nature of the two products, particularly in the higher water content of the tall
oil skimming soap that is emphasized by Appellants. (FF 13-16). However,
merely using the lower water content crude tall oil in the process, instead of
tall oil skimming soap, is not an unobvious improvement in light of the
teachings of Harada, as discussed above. Even Appellants acknowledge
that Harada discloses several drawbacks to using the high water content tall
oil skimming soap (FF 17-19), and thus the desire to use a lower water
content starting material, such as tall oil, would have been obvious to one of
ordinary skill in the art.
II. SECOND ISSUE
A. ISSUES ON APPEAL
Appellants also contend that Harada teaches using a thin film
evaporator in the distillation step and that a thin film evaporator is not a
“short path distillation column,” as recited in claim 1. (App. Br. 15). The
Examiner contends that a “short path distillation column” is a genus of
which a thin film evaporator is a species. (Ans. 8).
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Thus, a second issue on appeal arising from the contentions of
Appellants and the Examiner is: is the teaching of a thin film evaporator in
Harada sufficient to teach or suggest a “short path distillation column,” as
recited in claim 1?
B. FACTUAL FINDINGS
The following additional Findings of Fact are directed to the above
identified issues on appeal:
20. Appellants do not provide a clear definition of the term a “short
path distillation column” in Appellants’ Specification. (See generally
Spec.).
21. Appellants’ Specification mentions “short path distillation”
only once where it states “[t]he present invention is also related to a process
for obtaining high quality fatty and rosin acids from crude tall oil through
short path distillation of saponified crude tall oil.” (Spec. 2, ¶ 2).
22. Appellants also disclose using “short path evaporators”
throughout the Specification. (See Spec. 7, ¶ 4; 8, ¶ 3; 9, ¶¶ 3 and 4; 10, ¶ 6;
11, ¶ 1; 12, ¶ 1; and Examples 1 and 2).
23. Further, for steps other than the “distillation step,” Appellants’
Specification discloses the use of other types of evaporators as equivalent
alternatives to a “short path evaporator”, including thin film evaporators,
falling film evaporators and packed fractionating columns. (Spec. 9, ¶¶ 3 and
4).
24. Harada teaches distillation of heavy unsaponifiable matter using
a thin film evaporator. (Harada, col. 4, ll. 61-63).
25. Harada recognizes that it is desirable “to minimize the
decomposition of the thermally unstable matter” and that it is desirable to
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perform the distillation step at low boiling temperatures, such as a
temperature lower than the melting point of the tall oil skimming soap.
(Harada, col. 4, ll. 54-68).
26. Harada also recognizes that it is desirable to distill for the
removal of the heavy unsaponifiables under the lowest pressure possible.
(Harada, col. 6, l. 45-col. 7, l. 7).
27. Boldea teaches that “short path distillation includes at least one
of falling film evaporator, thin film evaporator, wiped film evaporator, or
short-path evaporator.” (Boldea, col. 4, ll. 5-7).
28. Pages 1-2 of Appellants’ submission as Exhibit 3, referred to as
“Americas VTA” (hereinafter “Appellants’ Exhibit 3”), describes “Wiped
Film and Short Path Distillation Plants,” but does not distinguish between a
thin film evaporator and a “short path distillation column.”
29. Page 3 of Appellants’ Exhibit 3 states that “[i]n simple thin film
evaporator design the condenser is located outside but as close to the
evaporator as possible” while “[i]n a Short Path Evaporator the condenser is
located inside the evaporator body” such that short path evaporators can be
used down to approximately 1 mbar pressure. (See also Appellants’ Exhibit
3, at 4.)
30. Page 3 of Appellants’ Exhibit 3 also states that “Short-Path
Distillation is a thermal separation process for thermal sensitive products.
Short residence time and low evaporation temperature will cause a minimum
thermal stress to the distilled product.”
31. However, page 3 of Appellants’ Exhibit 3 also teaches that
“[r]esidence time in Thin Film Evaporators and Short Path Evaporators is
only [a] few seconds, which helps to avoid thermal decomposition of the
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product.” Thus, both thin film evaporators and short path evaporators
equally function as short-path distillation, as it is defined therein.
32. However, page 4 of Appellants’ Exhibit 3 also teaches that
using “Short-Path Distillation” will eliminate the disadvantage of a limited
pressure due to the pressure drop of the connection between evaporator and
condenser that occurs in “a Wiped-Film Evaporator” because “[t]he
condenser is located inside a cylindrical evaporator.”
33. Further, the Declaration states that “[o]ne of ordinary skill in
the art would not consider thin film evaporation to be a type of short path
distillation.” (Decl., ¶ 13).
C. PRINCIPLES OF LAW
Since the issue addressed above concerns the meaning of the term
“short path distillation column,” “the first inquiry must be into exactly what
the claims define.” In re Wilder, 429 F.2d 447, 450 (CCPA 1970). “It is a
‘bedrock principle’ of patent law that ‘the claims of a patent define the
invention to which the patentee is entitled the right to exclude.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(quoting Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed.Cir.2004).
During examination, “‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read 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)(quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
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While we consult the Specification to determine the meaning of the
claim term, we take care to not limit the claim to the specific embodiments
disclosed in the Specification when the term appears to have a broader
meaning. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”)
and Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc)
(“[T]he line between construing terms and importing limitations can be
discerned with reasonable certainty and predictability if the court's focus
remains on understanding how a person of ordinary skill in the art would
understand the claim terms. For instance, although the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”).
Proper claim interpretation is a legal question and not a question of
fact. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-1568 (Fed.
Cir. 1987)(“Analysis begins with a key legal question -- what is the
invention claimed?”). Although factual evidence is preferable to opinion
testimony, such testimony is entitled to consideration and some weight so
long as the opinion is not on the ultimate legal conclusion at issue (i.e., what
the claim means). While an opinion as to a legal conclusion is not entitled to
any weight, the underlying basis for the opinion may be persuasive. In re
Chilowsky, 306 F.2d 908, 916 (CCPA 1962); In re Lindell, 385 F.2d 453,
456 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the
ultimate legal issue is not evidence in the case, “some weight ought to be
given to a persuasively supported statement of one skilled in the art on what
was not obvious to him.”).
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Further, little probative value is to be given to opinion evidence that
lacks supporting factual evidence. In re Altenpohl, 500 F.2d 1151, 1158
(CCPA 1974) (lack of factual support rendered an affidavit of little probative
value in overcoming obviousness rejection).
Regarding obviousness, “[i]f a person of ordinary skill can implement
a predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 127 S. Ct. at 1740.
D. ANALYSIS
Appellants contend that the claimed short path distillation columns are
“also known as short path evaporators” and rely on the distinction between
short path evaporators and thin film evaporators discussed in Appellants’
Exhibit 3. (App. Br. 15). However, Appellants’ Specification does not
specifically define the term “short path distillation column” (FF 20), and,
more particularly, does not use these two terms interchangeably in any
instance. Rather, Appellants’ Specification uses the term “short path
distillation” only once and in a general context. (FF 21). Throughout most
of the Specification, Appellants’ use the term “short path evaporator.” (FF
22). However, the later use of the term “short path evaporator” as an
example is not sufficient to define the term “short path distillation column”
as being analogous to a short path evaporator. See In re Van Geuns, 988
F.2d at 1184. We find it important in resolving the issue before us to note
that the Appellants chose to use the term “short path distillation column” in
claim 1 rather than opting for the term “short path evaporator,” which we
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find to be clearly distinguishable from a thin film evaporator from the
evidence before us.
The teachings of Boldea, which indicate that a short path evaporator is
a type of short path distillation column along with other types of evaporators
including thin film evaporators (FF 27), do not conflict with any meanings
supplied by the Specification. In fact, the Specification specifically
identifies thin film evaporators and falling film evaporators, which Boldea
also identifies as types of short path distillation, as being equivalent to short
path evaporators in some contexts. (FF 23 and 27). Thus, the Specification
and teachings of Boldea heavily favor the interpretation provided by the
Examiner, i.e., that thin film evaporators and short path evaporators are
species of a “short path distillation column” genus. (Ans. 4-5 and 8).
Further, the teachings of Appellants’ Exhibit 3, entitled “Americas
VTA,” also do not clearly support Appellants’ contention that the meanings
of the terms “short path distillation column” and “short path evaporator” are
necessarily identical. While Exhibit 3 clearly distinguishes between a wiped
film evaporator and a short path evaporator (FF 28), it does not distinguish
the term “short path distillation column,” as claimed, from a thin film
evaporator. Exhibit 3 also distinguishes a thin film evaporator from a short
path evaporator based on lowest pressure obtained and position of the
condenser. (FF 29). However, Exhibit 3 actually supports the Examiner’s
interpretation that thin film evaporators and short path evaporators are both
types of “short path distillation columns,” by indicating that both thin film
evaporators and short path evaporators exhibit short residence times and
avoid thermal decomposition of their products. (FF 30 and 31). Thus,
Exhibit 3 does not conflict with the teachings of Boldea that thin film
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evaporators and short path evaporators are both types of “short path
distillation.”
We recognize that Exhibit 3 also teaches that short path distillation
eliminates the disadvantage of wiped film evaporators in that “[t]he
condenser is located inside a cylindrical evaporator.” (FF 32). However,
this statement alone, particularly in light of the other teachings of Exhibit 3
discussed above, does not clearly conflict with the Examiner’s interpretation
that a thin film evaporator is a type of short path distillation, particularly
because this statement is directed to distinguishing between short path
distillation and a wiped film evaporator.2
Thus, Appellants have not established that “short path distillation
column” and “short path evaporator” are known to be the same thing.
Also, the Declaration submitted by Appellants fails to overcome the
other evidence of obviousness. Although the Declaration emphasizes that a
short path evaporator is not suitable for use with tall oil skimming soaps due
to flashing and foaming that occurs from the high water content (FF 14 and
16), we have already established that it would have been obvious to use
crude tall oil instead of tall oil skimming soap, as such this disadvantage is
eliminated. Further, in these instances the Declaration uses the term “short
path evaporator” rather than “short path distillation column,” which
Appellants have yet to establish are synonymous terms.

2 We also note that this statement in Exhibit 3 is in conflict with the
teachings of Boldea to the extent that Boldea suggests that a wiped film
evaporator is a type of short path distillation. However, the issue of whether
or not a wiped film evaporator falls within the scope of the term “short path
distillation column” is not before us. We need only address the thin film
evaporator taught by Harada.
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The Declaration also states that “[o]ne of ordinary skill in the art
would not consider thin film evaporators to be a type of short path
distillation.” (FF 33). While this opinion evidence directly contradicts the
teachings of Boldea, this evidence is unsupported by factual evidence, and
we can provide it with little probative value upon interpreting the meaning
of the term “short path distillation column.” Panduit, 810 F.2d at 1567-
1568; Chilowsky, 306 F.2d at 916; Lindell, 385 F.2d at 456.
With a lack of sufficient rebuttal evidence as to the meaning of the
term “short path distillation column,” we agree with the Examiner’s
interpretation that a thin film evaporator is a species of the genus “short path
distillation column.” Thus, Harada’s teaching of using a thin film
evaporator (FF 25) falls within the scope of claim 1, as herein interpreted.
Even if we found that the terms “short path evaporator” and “short
path distillation column” were of the same meaning such that a thin film
evaporator was not a type of short path distillation column as recited in
claim 1, there is sufficient evidence provided in Appellants’ Specification
(FF 23), Boldea (FF 27), and Appellants’ Exhibit 3 (FF 29-31) to establish
that short path evaporators and thin film evaporators would be
art-recognized equivalents, both having low pressure and reduced thermal
decomposition of their products. Thus, one of ordinary skill in the art would
have sufficient motivation and a reasonable expectation of success to
substitute a short path evaporator for a thin film evaporator. Harada would
provide further motivation for such a substitution by indicating that it is
desirable to remove heavy unsaponifiable matter at low pressure and low
temperatures (FF 25-26), and it was well-known in the art that short path
Appeal 2008- 5362
Application 11/121,269

19
evaporators operate at lower temperatures and pressures than thin film
evaporators.
IV. CONCLUSION
Based on the totality of record, including due consideration of the
Appellants’ arguments, we determine that the 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 1-13 under
35 U.S.C. § 103(a) as obvious over Harada in view of Aitta, as evidenced by
Huibers and Boldea.
V. DECISION
We affirm the Examiner’s decision.

VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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