Ex Parte Startin et al

Patent Trial and Appeal Board

Aug 31, 2016

12530627 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/530,627 03/22/2011
26645 7590
The Lubrizol Corporation
29400 Lakeland Blvd.
Wickliffe, OH 44092-2298
09/02/2016
FIRST NAMED INVENTOR
Sarah J. Startin
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.
3562-01 2924
EXAMINER
WEISS, PAMELA HL
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
patents@lubrizol.com
cathy.bartel@lubrizol.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH J. STARTIN and DAVID HOBSON
Appeal 2015-001541
Application 12/530,627
Technology Center 1700
Before PETER F. KRATZ, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1, 2, and 8. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 Appellants identify the real party in interest as The Lubrizol Corporation.
Appeal Brief filed August 11, 2014 ("Br."), 3.
2 Final Office Action mailed June 16, 2014 ("Final Act.").
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Application 12/530,627
The claims are directed to a fuel composition and a method for fueling
an internal combustion engine using a fuel composition. Spec. 1, 11. 8-10.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A fuel composition, comprising:
a. a fuel selected from the group consisting of a C1--4 alkyl
fatty acid ester, or a combination of about 1.0 to about 50% of a
C1--4 alkyl fatty acid ester and about 50 to about 99% of a
petroleum distillate diesel fuel;
b. about 1 to about 1000 ppm of a nitrogen containing
detergent that is the reaction product of polyisobutylene
succinic anhydride and a polyamine; and
c. about 1 to about 10,000 ppm of an alkylated phenol
antioxidant where the nitrogen containing detergent is a
polyisobutylene succinimide and the polyisobutylene has a
molecular weight from about 500 to about 5000,and
where the alkylated phenol antioxidant is 2,6-di-tert-
butylphenol, and
where the fuel composition is a diesel fuel or biodiesel fuel.
Revised Claims Appendix filed September 2, 2014, 2. Independent claim 8
includes a similar fuel composition.
REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Clarke et al. (US 2004/0128905 Al, published
Jul. 8, 2004) (hereinafter "Clarke") as evidenced by or
alternatively in view of Grundy (WO 98/42808, published
Oct. 1, 1998) (hereinafter "Grundy"); and
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Application 12/530,627
2. Claims 1, 2, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eydoux et al. (US 2005/0223627 Al, published
Oct. 13, 2005) (hereinafter "Eydoux") alone or in view of Esen et
al. (US 2005/0210739 Al, published Sept. 29, 2005) (hereinafter
"Esen") or Clark.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusions that the subject matter of Appellants'
claims is unpatentable over the applied prior art. Accordingly, we sustain
the Examiner's rejections for substantially the findings and reasons set forth
by the Examiner in the Final Office Action and Answer. See generally Final
Act. 2-21 and Examiner's Answer mailed September 11, 2014 ("Ans.), 2-
25. We offer the following for emphasis only.
The Appellants argue the claims as a group. We select claim 1 as
representative of the rejected claims, and the remaining claims on appeal
will stand or fall with claim 1.
Rejection 1
The Examiner finds that Clarke discloses a fuel composition
comprising a fuel including (i) a base fuel, which can be a petroleum
distillate diesel fuel, in an amount of 50% to 95% v/v (i1i120, 34), and (ii) an
oxygenate, which can be a Cs to C22 vegetable oil derivative such as
rapeseed methyl ester (a C1--4 alkyl fatty acid ester), in an amount of from 1
to 30% (i-f 59). Final Act. 4. The Examiner finds that Clarke further
discloses that its fuel composition may include 20 to 500 ppmw of a
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Application 12/530,627
detergent, preferably polyisobutylene succinimides Cilil 70-72) and 5 to 1000
ppm of an antioxidant such as 2,6-di-tert-butylphenol (i1i174--75). Id. at 4--5.
Appellants argue Clarke teaches a three-part fuel blend that requires a
Fischer-Tropsch fuel in addition to its base fuel and oxygenate, and thus,
Clark's fuel composition would not read on the claimed composition that
includes a fuel consisting of a single fuel (i.e., C1--4 alkyl fatty acid ester) or a
two-part fuel combination (i.e., C1--4 alkyl fatty acid ester and a petroleum
distallate). Br. 6-8. This argument is not persuasive. Claims 1 (as well as
claim 8) use the transitional phrase "comprising," and thus does not exclude
additional unrecited elements such as a fuel including Fischer-Tropsch fuel.
In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981) (When a claim employs
the transitional term "comprising," it is interpreted as permitting the
presence of additional ingredients and/or steps, which are not recited.).
Further, even if claims 1 and 8 exclude a three-component fuel blend,
as Appellants contend, Clarke teaches two-part fuel blends including just the
base fuel and the oxygenate could be used as a fuel composition.
Clarke i-f 115. Although Clarke teaches that its tertiary fuel blends have
improved performance (in particular emissions performance), compared to
blends containing only an oxygenate and a base fuel (Clarke i-f 12), Clarke
does not discourage the use of two-part fuel blends. Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) ("A reference does not
teach away ... if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.").
Appellants next argue that the Specification (17-19 (Tables 1 and 2))
provides evidence that the claimed composition exhibits unexpected
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Application 12/530,627
improved properties (e.g., oxidative stability) effectively rebutting the
Examiner's prima facie case of obviousness over Clarke as evidenced or in
view of Grundy. Br. 10. This argument is not persuasive. The disclosure in
the Specification does not identify the results as unexpected. On the record
before us, only the attorney who authored the Appeal Brief states that the
evidence in the Specification is unexpected, however, there is not sufficient
evidence that explains what improvement would have been expected or what
additional improvement beyond an expected result was produced by the
claimed composition. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir.
1997) (reiterating that unexpected results must be established by factual
evidence and that an attorney's statement is insufficient to establish
unexpected results).
Moreover, for the reasons well-stated by the Examiner in the Answer
(Ans. 21-25), the evidence presented in the Specification is not reasonably
commensurate in scope with the appealed claims. The fuel in claims 1
comprises about 1 to about 50% of a C1--4 alkyl fatty acid ester or about 1 to
about 50% of a C1--4 alkyl fatty acid ester and any petroleum distillate diesel
fuel in amounts of about 50 to 99%. The latter two-component fuel in claim
1 is also recited in claim 8. Both claims 1 and 8 also require polyisobutylene
succinimide with a molecular weight of about 500 to about 5000 in a broad
concentration range of about 1 to about 10,000 ppm, and 2,6-di-tert-
butylphenol in a broad concentration range of about 1 to about 1000 ppm.
The fuel compositions tested in Examples 1-5 in Table 1 of the
Specification include polyisobutylene succinimide in amounts of 24.75 ppm,
25 ppm, 65.25 ppm, and 100 ppm (the claimed range is 1-1000 ppm), 2,6-
tert-butylphenol in amounts of 100 ppm, 200 ppm, 200.25 ppm, 297.25 ppm,
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Application 12/530,627
and 300 ppm (the claimed range is 1-10,000 ppm). Example 10 in Table 2
of the Specification includes a fuel with soya methyl ester and ultra low
sulfur diesel fuel, the only two-component fuel tested, along with 35 ppm of
polyisobutylene succinimide and 500 ppm of 2,6-di-tert-butylphenol.
Appellants have not established that the results obtained using the fuel
compositions in Examples 1-5 (Table 1) and Example 10 (Table 2) are
representative of the results which would be obtained over the broad scope
of compositions covered by the claims. See In re Kollman, 595 F.2d 48, 55
( CCP A 1979) (multiple examples and data points purportedly showing
unexpected results did not provide an adequate basis to determine that the
great number of compositions contained in the claims would behave the
same way); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978)
("Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for 'it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."').
Because Appellants' arguments do not identify a reversible error in
the Examiner's first-stated obviousness rejection, we sustain the rejection.
Rejection 2
The Examiner's second obviousness is based on the combined
teachings ofEydoux in view ofEsen or Clarke. See Final Act. 8-12.
Appellants argue that Eydoux is directed to a jet fuel, not a biodiesel fuel,
and does not teach or suggest the detergent required by claim 1. Br. 13-15.
These arguments are not persuasive. We do not find these arguments to be
persuasive because Appellants are attacking Eydoux individually when the
rejection is based on a combination of references. See In re Keller, 642 F.2d
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413, 426 (CCPA 1981) ("one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references."). Moreover, as discussed above with regard to
the first-stated rejection, Clarke teaches or would have suggested a fuel
composition of claim 1. Because Appellants' arguments do not identify a
reversible error in the Examiner's second-stated obviousness rejection, we
sustain the rejection.
DECISION
For the above reasons, the rejections of claims 1, 2, and 8 are
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).
AFFIRMED
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