Ex Parte 8,187,344 B2 et al

Patent Trial and Appeal Board

Sep 28, 2016

95002084 (P.T.A.B. Sep. 28, 2016)

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.
95/002,084 08/17/2012 8,187,344 B2 11202.0010-00 2485
22852 7590 09/28/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
XU, LING X
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/28/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

REG SYNTHETIC FUELS, LLC
Requester

v.

Patent of NESTE OIL OYJ
Patent Owner and Appellant
____________

Appeal 2016-001900
Reexamination Control 95/002,084
Patent 8,187,344 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner Neste Oil Oyj (“Patent Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) (pre-AIA) from the Examiner’s decision to
reject claims 4, 11, 13, 36-38.1 Third-Party Requester REG Synthetic Fuels,
LLC (hereinafter “Requester”) urges that the Examiner’s decision must be
affirmed.2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a)
(pre-AIA). We AFFIRM the Examiner’s decision to reject claims 4, 11, 13,
and 36-38.

STATEMENT OF THE CASE
United States Patent 8,187,344 B2 (hereinafter the “’344 Patent”),
which is the subject of the current inter partes reexamination, issued to Juha
Jakkula et al. on May 29, 2012. Patent Owner informs us of related
litigation styled Neste Oil Oyj v. Dynamic Fuels, LLC, C.A. No.
12-662-GMS, D.I. 40 (D. Del. Dec. 22, 2014), which has been dismissed, as
well as Ex parte Neste Oil Oyj, Appeal 2012–002608 (BPAI Mar. 22, 2012),
which is a decision on appeal in an ex parte reexamination of U.S. Patent
No. 7,279,018 (“the ’018 Patent”), where the Board affirmed the Examiner’s
rejection of the claims. (App. Br. 2.)

1 The rejection of claims 1 and 6 have not been appealed. Claims 2, 3, 5,
7-9, 10, 14-17, and 18-35 have been cancelled. See Patent Owner’s Appeal
Brief 3, 9 (filed February 18, 2015) (hereinafter “App. Br.”); Examiner’s
Answer (mailed April 29, 2015) (hereinafter “Ans.”); Right of Appeal
Notice (mailed November 14, 2014) (hereinafter “RAN.”).
2 See Requester’s Respondent Brief (filed March 18, 2015) (hereinafter
“Resp’t Br.”).
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The ’344 Patent issued from U.S. Application No. 12/354,634, which
claims to be a division of Application No. 11/852,096, which in turn claims
to be a division of U.S. Application No. 10/655,798, from which the ’018
Patent issued.
We heard oral arguments from both Patent Owner and Requester on
April 20, 2016, a transcript of which was entered into the electronic record
on May 12, 2016.
The ’344 Patent relates to fuel compositions for diesel engines.
(Col. 1, ll. 15-20.)
Claims 1 and 4,3 which are illustrative of the appealed subject matter,
read as follows:
1. A composition for diesel fuel, wherein said
composition consists of at least one component produced by a
process comprising:
providing at least one biological raw material originating
from animals, wherein said biological raw material contains
fatty acids and/or fatty acid esters;
hydrogenating and decomposing said fatty acids and/or
fatty acid esters to form hydrocarbons;
isomerizing said hydrocarbons to form isoparaffins; and
wherein said composition is free of aromates and has a
cetane number higher than 60.
4. The composition according to claim 1 having a
turbidity point lower than -30°C.

(PO App. Br. A-1 Claims App’x.)

3 Although the rejection of claim 1 has not been appealed, because claim 4 is
dependent therefrom, we reproduce it here for the benefit of the reader.
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Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 4, 11, 13, and 36-38 under 35 U.S.C. § 103(a) as
obvious over SE ’149 (SE 9700149, published August 6, 1997,
citations to English translation of record) and Monnier (U.S.
Patent No. 5,705,722, issued January 6, 1998), as evidenced by
the Declaration of Ramin Abhari executed on August 17, 2012
(App. Br., Exh. 12, “the 1st Abhari Declaration”); and
II. Claims 4, 11, 13, and 36-38 under 35 U.S.C. § 103(a) as
obvious over Monnier, Miller (WO 01/49812 A1), and Corma
(Avelino Corma & Agustín Martínez, “Transformation of
Alkanes on Solid Acid and Bifunctional Catalysis,” in
CATALYTIC ACTIVATION AND FUNCTIONALISATION
OF LIGHT ALKANES ADVANCES AND CHALLENGES
35-74 (Eric G. Derouane et al. ed. 1998), as evidenced by the 1st
Abhari Declaration.

Patent Owner additionally relies on the following Declaration
evidence of record:
Declaration of Michael T. Klein, Sc.D., dated Aug. 23, 2013 (“1st
Klein Decl.”);
Second Declaration of Dr. Michael T. Klein, Sc.D., dated February
12, 2014 (“2nd Klein Decl.”); and
Third Declaration of Dr. Michael T. Klein, Sc.D., dated September
25, 2014 (“3rd Klein Decl.”).
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In addition to the 1st Abhari Declaration cited above, Requester relies
on the following Declaration evidence of record:
Declaration of Ramin Abhari executed on December 13, 2012 (“2nd
Abhari Decl.”);
Declaration of Ramin Abhari dated September 23, 20l3 (“3rd Abhari
Decl.”);
Declaration of Ramin Abhari dated May 16, 2014 (“4th Abhari
Dec1.”);
Declaration of Dr. Edward L. Sughrue II dated May 16, 2014 (“2nd
Sughrue Dec1.”);
Declaration of Ramin Abhari dated Oct. 24, 2014 (“5th Abhari
Decl.”); and
Declaration of Dr. Edward L. Sughrue II dated Oct. 24, 2014 (“3rd
Sughrue Decl.”).

Rejection II
ISSUE
The Examiner found that Monnier discloses hydrogenating a biomass
feedstock to produce a diesel fuel additive having a cetane number4 greater
than 90, but that Monnier did not teach that the diesel fuel additive
composition is isomerized. (RAN 10-11.) The Examiner found that Miller
discloses isomerization of a highly paraffinic feed and that Miller discloses

4 Cetane number rates the ignition quality of fuel in a diesel engine. (1st
Klein Decl., para. 11.) A higher cetane number indicates greater fuel
efficiency. (Id.)
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diesel fuels with a very high isoparaffin to normal paraffin mole ratio and
very low pour points and turbidity points (cloud points),5 such as -48°C.
(RAN 11.) The Examiner found that Corma contains a similar teaching that
isomerizing linear paraffins can improve cold flow properties. (RAN 11.)
The Examiner concluded that it would have been obvious to improve the
fuel additive of Monnier by further isomerizing the paraffinic feed to
improve the low temperature properties of the additive as taught by Miller
and Corma resulting in a composition having the turbidity point and cetane
number recited in the claims. (RAN 11.)
Patent Owner contends that even though Miller discloses turbidity
points lower than -30°C, Miller discloses a Fischer Tropsch (FT) wax
feedstock, which is a different type of feedstock than the biological
feedstock in Monnier, such that one of ordinary skill in the art would not
have understood that the turbidity points recited in the claims could be
achieved with the feedstock used in Monnier. (App. Br. 27.) Patent Owner
argues that Miller employs hydrocracking rather than isomerization to
achieve the particular result described therein, which is different than
isomerizing n-paraffins from biological raw materials as recited in the
claims, and as a result, there would be no reasonable expectation of
achieving the same turbidity points as obtained by Miller when isomerizing
a biological feedstock. (App. Br. 28-30, 31-32.) Patent Owner contends
also that there is no predictability or reasonable expectation of success in
obtaining a diesel fuel derived from a biological feedstock having turbidity

5 Turbidity point or cloud point is the temperature that wax crystals become
visible as a fuel cools. (1st Klein Decl., para. 13.)
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point lower than -30°C with a cetane number higher than 60. (App. Br.
30-34.)
Requester argues that Miller discloses more generally that n-paraffins
may be isomerized, and that Monnier’s feedstock and Miller’s feedstock
produce compositionally similar paraffin fractions. (Resp’t Br. 13-14.)
Requester contends also that the evidence of record supports the rejection of
the claims and provides a reasonable expectation of success in obtaining a
turbidity point lower than -30°C with a cetane number higher than 60 as
recited in the claims. (Resp’t Br. 14-17.)
Accordingly, the dispositive issue on appeal is: In view of the
evidence of record, would it have been obvious to one of ordinary skill in the
art at the time of the invention to produce a composition with a turbidity
point lower than -30°C and a cetane number higher than 60 as recited in
claim 4 with a reasonable expectation of success?

FINDINGS OF FACT (“FF”)
1. The ’344 Patent discloses high quality hydrocarbon components
of biological origin, which are used as a diesel fuel component
by hydrogenating a biological raw material and isomerizing the
product to produce branched hydrocarbon chains to improve the
low temperature properties. (Col. 4, ll. 13-33.)
2. The ’344 Patent states: “with a turbidity point lower than -30
°C. a cetane number higher than 60 can still be achieved. The
process can be adjusted according to the desired cetane number
and turbidity point.” (Col. 4, ll. 33-36.)
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3. The ’344 Patent does not expressly describe the conditions used
to hydrogenate and isomerize biological raw materials in
producing isomerized biological components having a cetane
number higher than 60 and a turbidity point lower than -30°C.
4. Monnier discloses additives for diesel fuels having high cetane
number derived from biomass feedstocks including animal fats.
(Col. 1, ll. 10-13, 58-67.)
5. Monnier discloses examples of hydrocarbons obtained from an
animal tallow feedstock having a cetane number of greater than
90 in the fraction that boils between 204°C to 343°C. (Col. 7,
ll. 19-67.)
6. Miller discloses that highly paraffinic diesel fuels having a very
high iso-paraffin to normal paraffin ratio, preferably prepared
by isomerizing a highly paraffinic Fischer Tropsch (FT) feed,
produce cloud points (turbidity points) lower than -30°C. (p. 2,
ll. 9-28; pp. 14-15, Examples 1 and 2, Tables II and III,
disclosing Cloud points for the Diesel Cut (a 350-650 °F diesel)
of lower than -60°C and -41°C with Iso/Normal Paraffin Ratios
of 34.5 and 22.1, respectively.)
7. Miller discloses that the isoparaffin to normal paraffin ratio
may be adjusted by adjusting conversion of normal paraffins
over an isomerization catalyst. (p. 6, ll. 21-25.)
8. Corma discloses that it is known that reducing the content of
waxy linear paraffins by selective hydrocracking or
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isomerization improves cold flow properties such as viscosity,
pour point, and freezing point. (pp. 69-70.)

ANALYSIS
Patent Owner does not present separate arguments for the claims on
appeal. Accordingly, we choose claim 4 as representative. See 37 C.F.R.
§ 41.67(c)(1)(vii).
After careful consideration of the evidence of record, we agree with
the Examiner that the composition as recited in claim 4 would have been
obvious to one of ordinary skill in the art. In summary, we are not
persuaded by Patent Owner’s arguments that because Miller employs FT
feedstocks, which are disclosed as preferred feedstocks, one of ordinary skill
in the art would not have reasonably expected that application of the
methods disclosed in Miller to other feedstocks such as the biological
feedstocks disclosed in Monnier would lead to the turbidity points and
cetane numbers recited in the claims.
Initially, we observe that Patent Owner defines a person of ordinary
skill in the art as someone who would possess a degree in chemical
engineering or chemistry and two to three years of experience in petroleum
refining with a general understanding of petroleum refining equipment and
catalysts, but a “fairly limited understanding of alternative fuels made using
biological materials, given that this was still an emerging technical field in
2002.” (Reb. Br. 4 citing Declaration of Pekka Aalto executed on November
14, 2012, para. 15 (the “Aalto Declaration”), and filed with Patent Owner’s
amendment of November 14, 2012, indicated as being considered by the
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Examiner in the Action Closing Prosecution mailed June 26, 2013; 2nd
Abhari Decl., para. 9.) Although Requester does not appear to dispute
Patent Owner’s description of the skilled artisan, our reviewing court has
previously approved the Board’s approach that the level of ordinary skill in
the art is best determined by the references of record, and therefore we focus
primarily on the teachings of the prior art references, taking account of the
declaration evidence, in resolving the level of skill in the art. In re GPAC,
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
As further explained below, although we have considered the
significant evidence of record, we find that a preponderance of the evidence
supports the position that compositions having components prepared from
biological raw materials originating from animals having a turbidity point of
lower than -30 ºC would have been obvious to one of ordinary skill in the
art. That is, one of ordinary skill in the art would have had a reasonable
expectation of success in isomerizing Monnier’s product as taught by Miller
and Corma and, in doing so, lowering turbidity points to levels consistent
with the turbidity points taught by Miller and that fall within the range
recited in the claims.
As Requester points out, absolute predictability is not required in
order to support a conclusion of obviousness. (Resp’t Br. 10.) Indeed,
“[f]or obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988) (citations omitted).
Specifically, Miller discloses that by increasing the isoparaffin to
normal paraffin ratio, the low temperature properties of diesel fuels may be
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improved, and also discloses compositions where the turbidity point is lower
than -30 ºC. (FF 6, 7.) Thus, Miller expressly discloses that isomerization
may be used to adjust the isoparaffin to normal paraffin ratio, and, in doing
so, obtain turbidity points consistent with those disclosed in Miller, which
are well below the upper limit recited in the claims. (FF 6, 7.) Although
hydrocracking may produce molecules having low carbon numbers, which
according to Patent Owner, contribute to Miller’s reported lower turbidity
points (App. Br. 28), Miller emphasizes that the properties measured are
related to the diesel cut, and not to the raw product obtained by
hydrocracking/isomerizing. (FF 6; Resp’t Br. 14; 3rd Abhari Decl., para.
25.) Requester has provided evidence that the diesel cuts (C10-C24
n-paraffins) produced from the FT feedstocks used in Miller are
compositionally similar to the C10-C24 n-paraffins produced from animal fats
(Resp’t Br. 13-14, 5th Abhari Decl. para. 24, 2nd Sughrue Decl., para. 10),
and, therefore, we determine that a person having ordinary skill in the art
would reasonably expect that Miller’s technique of adjusting isoparaffin to
normal paraffin ratio by isomerization would provide similar beneficial
results when implemented for Monnier’s hydrocarbon product in the diesel
fuel range. Importantly, the prior art, particularly Miller and Corma,
supports the Examiner’s position that isomerization was a well-known
method for improving the low temperature properties of diesel fuels. (FF
6-8.)
In this regard, we have not been directed to sufficient evidence of
record that the diesel cuts produced from different feedstocks would have
been understood to be sufficiently compositionally dissimilar such that one
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of ordinary skill in the art would have not have expected similar turbidity
points in applying the isomerization techniques of Miller and Corma to
Monnier.
In view of the above, we are unpersuaded by Patent Owner’s
arguments that Miller discloses hydrocracking such that one of ordinary skill
in the art would have understood that the low turbidity points obtained in
Miller were partially due to the lower melting points of low carbon number
paraffins obtained as a result of hydrocracking and that the Examiner
misunderstood the difference between hydrocracking and isomerization.
(App. Br. 28, 29, 31-33.) Thus, one of ordinary skill in the art would have
had a reasonable expectation of success that compositionally similar
paraffins produced from a different feedstock would have behaved in a
similar manner and would have had a reasonable expectation of success in
obtaining turbidity points of less than -30 ºC by isomerizing the n-paraffins
in the biological feedstock of Monnier, given the results obtained in Miller.
Cf. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (explaining, in the
context of the unpredictable biochemical arts, that structural similarity often
provides the requisite motivation or reason to modify old compounds to
form new compounds).
We are also unpersuaded by Patent Owner’s argument that obtaining a
turbidity point of lower than -30 ºC from a biological feedstock would have
been unpredictable. Patent Owner argues that the 1st Abhari Declaration,
which allegedly reproduced Monnier’s Example 5 and was relied on by the
Examiner, is scientifically flawed. (App. Br. 27, 11-13; 1st Abhari Decl.,
paras. 24-32.) Specifically, Patent Owner argues that the iso/normal ratio to
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turbidity point graph in the 1st Abhari Declaration, allegedly showing a
linear relationship between iso/normal ratio of paraffins and turbidity point,
fails to achieve a turbidity point of less than -26 ºC and also omits data
points that would allegedly show that the turbidity point would level off at
-26 ºC. (App. Br. 27, 11-13; 1st Abhari Decl., para. 46; Exh. D.) In addition,
Patent Owner, relying on its own declaration evidence, contends that one of
ordinary skill in the art would not have applied any trendlines to the plotted
data, because trendlines fail to capture any possibilities including leveling
off, an upturn, or a eutectic point as the iso/normal ratio increases. (App. Br.
14, 1st Klein Decl. paras. 21, 24, 44, 2nd Klein Decl. para. 19, 20;
Lira-Galeana;6 Widmor.7) Patent Owner argues also that turbidity points of
multicomponent mixtures are not predictable due to the complexity of the
mixtures and the properties of the molecules contained therein. (App. Br.
15-16, 2nd Klein Decl., para. 7.) Patent Owner relied on declaration
testimony to provide support for its arguments. (App. Br. 18-19, 2nd Klein
Decl., paras. 11-14.) Further evidence is provided by Patent Owner to
discuss the alleged unpredictability of obtaining turbidity points lower than
-30 ºC and to support the positions of the earlier declarations. (App. Br.

6 Lira Galeana et al., Thermodynamics of Wax Precipitation in Petroleum
Mixtures, AIChE J. 42(1) 239-248 (1996). (App. Br., Exh. P11.)
7 N. M. Widmor et al., Prediction of the Freeze Point Temperature of Jet
Fuel Using a Thermodynamic Model, Petroleum Chem. Div. Preprints 47(3)
239-242 (2002). (App. Br., Exh. P25.)
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19-22, citing Lira-Galeana, Widmor, Affens,8 and 3rd and 4th Klein
Declarations.)
Requester contends that the 1st Abhari Declaration is sound and
provides further declaration evidence in support of its position and to rebut
the declaration evidence provided by Patent Owner. (Resp’t Br. 4-8, 15;
citing paragraphs of 1st Abhari Decl., 4th Abhari Decl., 5th Abhari Decl.)
We find the evidence related to extrapolating turbidity points of real
world diesel fuels as set forth in the 1st Abhari Declaration or modeling of
simple mixtures as set forth in the 1st Klein Declaration to be of limited
value in assessing whether one of ordinary skill in the art would have had a
reasonable expectation of success in obtaining a turbidity point of -30 ºC
recited in the claims. We are of the view that extrapolating turbidity points
based on experimental data in order to predict the turbidity point behavior of
multi-component diesel fuels, as done in the 1st Abhari Declaration, even
though consistent with the results obtained in Miller, is, by its nature,
speculative and entitled to little weight in predicting the actual behavior of
complex mixtures. (1st Abhari Decl., para. 46; Exh. D; App. Br. 21, 1st Klein
Decl. para. 21-27.) As acknowledged in the record, such extrapolation, as
well as modeling, including the behavior of individual hydrocarbons, is not
adequate for predicting the behavior of complex mixtures, such as those
disclosed in Monnier. (4th Abhari Decl. para. 7; 2nd Sughrue Decl. para. 12;
1st Klein Dec, Paras. 21, 26.) Nevertheless, we find the prior art evidence as
a whole is sufficient to support a conclusion that a person having ordinary

8 W. A. Affens et al., Effect of Composition on Freezing Points of Model
Hydrocarbon Fuels, Naval Research Laboratory 178-186. (App. Br., Exh.
R3.)
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skill in the art would have been prompted, based on a reasonable expectation
of success, to apply Miller’s technique in Monnier to obtain the beneficial
results discussed in Miller.
As to achieving the combined properties of turbidity point and cetane
number recited in the claims, Patent Owner argues specifically that it was
known that isoparaffins have lower cetane numbers than n-paraffins having
the same number of carbons, such that if isomerization is used on the
Monnier product for the benefits of isomerization taught by the prior art, the
cetane number “would not have necessarily been higher than 60” as recited
in the claims. (App. Br. 30, citing 1st Klein Decl. paras. 45-49, 2nd Klein
Decl. paras. 23-26.) We are also not persuaded by Patent Owner’s
arguments in this regard. (App. Br. 30-31.)
Although isomerization or branching of linear hydrocarbons may be
recognized as lowering cetane number, the evidence of record also indicates
that the degree of branching may be controlled by the isomerization catalyst
and conditions used. (Resp’t Br. 12, S.J. Miller,9 p. 2324, 2326; Sinha, 10 p.
2209, 2211; 5th Abhari Decl. para. 17; 3rd Sughrue Decl. paras. 10, 24-27,
Santana11 Tables 5-7; 2nd Klein Decl. para. 26.) In addition, there is also
evidence of record indicating that the loss of cetane number attributed to

9 S.J. Miller, Studies on Wax Isomerization for Lubes and Fuels, Studies in
Surface Science and Catalysis, 84: 2319-2323 (1994). (App. Br. Exh. R29.)
10 Anil K. Sinha et al., Hydroisomerization of n-Alkanes over Pt–SAPO-11
and PT–SAPO-31 Synthesized from Aqueous and Nonaqueous Media, 37
Ind. Eng. Chem. Res. 2208–2214 (1998). (App. Br. Exh. R18.)
11 Roberto C. Santana et al., Evaluation of Different Reaction Strategies for
the Improvement of Cetane Number in Diesel Fuels, Fuel 85: 643-656
(2006). (App. Br. Exh. P16.)
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isomerizing the Monnier’s product would still result in cetane numbers
higher than 60. (Resp’t Br. 16, 3rd Sughrue Decl. paras. 24-27.) Thus,
Patent Owner’s evidence relating to the increase in multiple branching as
lowering cetane number of hydrocarbons is not persuasive. (See, e.g., App.
Br. 30-33; 1st Klein Decl., para. 49; 2nd Klein Decl. para. 25; 3rd Klein Decl.,
paras. 28, 32, 40; Craig & Cogsworth,12 p. 11; Sinha, p. 2212; Davis,13 col.
3, ll. 34-40.)
Moreover, even though Patent Owner points to specific branched
hydrocarbons with a cetane number below 60 (App. Br. 30-31), the claims
are not limited to any particular individual hydrocarbon. Also, Monnier
discloses that the cetane number of the hydrocarbons obtained from an
animal tallow feedstock have a cetane number of greater than 90, which is
well above the lower limit of 60 recited in the claims. (FF 4, 5; See 3rd
Abhari Decl. pars 19.) We have not been directed to sufficient evidence of
record that one of ordinary skill in the art would have been unable to adjust
the isomerization conditions as necessary in order to obtain the combination
of properties recited in the claims with a reasonable expectation of success.
Indeed, the ’344 Patent, which discloses biological and non-biological
feedstocks, discloses that the turbidity points may be adjusted to lower than
-30ºC by adjusting the conditions employed in the isomerization reaction,
while maintaining a cetane number higher than 60. (FF 1, 2.) Notably, the
’344 Patent does not provide any examples or specific conditions for

12 A Marketing Survey of Worldwide Potential for Use of Vegetable Oil
Conversion Products in Diesel Fuel, SRC Publication No. R-1520-2-C-89
(1989). (App. Br. Exh. P5.)
13 U.S. Patent No. 5,378,348 issued January 3, 1995. (App. Br. Exh. R15.)
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preparing the compositions so as to achieve the turbidity point and cetane
number recited in the claims from biological feedstocks (FF 3), which would
presumably indicate that one of ordinary skill in the art would have been
able to adjust the conditions of the particular process steps taught by the
prior art, namely the hydrogenating and isomerization steps taught by
Monnier and Miller, to obtain compositions having the recited properties.
Accordingly, we find that the disclosures of the prior art and
declaration evidence supporting the Examiner’s position that one of ordinary
skill in the art would have had a reasonable expectation of success in
obtaining diesel fuels having the turbidity point and cetane values recited in
the claims from a biological feedstock outweigh the declaration evidence
and references supporting Patent Owner’s view that such values would have
been unpredictable. Therefore, one of ordinary skill in the art would have
reasonably expected that, by applying the isomerizing techniques of Miller
and Corma to Monnier, the properties desired for the fuel composition
would have been obtained.

Rejection I
Regarding Rejection I, neither SE ’149 nor Monnier discloses a
turbidity point of lower than -30 ºC. The Examiner stated it would have
been obvious to further isomerize the diesel fuel additive of Monnier to
improve the lower temperature properties of the additive while retaining the
favorable properties of SE ’149. (RAN 8.) The Examiner relies solely on
the 1st Abhari Declaration for the turbidity point recited in the claims. (RAN
9, citing 1st Abhari Decl. paras 45-50, Exh. C, D.) However, the 1st Abhari
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Declaration only specifies turbidity points as low as -26 ºC. Although one
of ordinary skill in the art would have reasonably expected that isomerizing
Monnier’s compositions in view of Miller would have lowered the turbidity
point, as explained above, we assign little weight to the extrapolations and
trend lines set forth in the 1st Abhari Declaration. Accordingly, we reverse
the Examiner’s decision to reject the claims as obvious over SE ’149,
Monnier, and the 1st Abhari Declaration.

CONCLUSION
On this record, the Examiner did not err in concluding that it would
have been obvious to one of ordinary skill in the art at the time of the
invention in view of Monnier, Miller, and Corma to produce a composition
with a turbidity point lower than -30°C and a cetane number higher than 60
as recited in claim 4 with a reasonable expectation of success.

DECISION
The Examiner’s decision to reject claims 4, 11, 13, and 36-38 as
obvious over Monnier, Miller, and Corma is affirmed. The Examiner’s
decision to reject claims 4, 11, 13, and 36-38 as obvious over SE ’149 and
Monnier is reversed.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
Appeal 2016-001900
Reexamination Control 95/002,084
Patent 8,187,344 B2

19

must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also Manual of Patent Examining Procedure, “MPEP” § 2682 (8th ed., Rev.
7, July 2008).

AFFIRMED

gvw

Appeal 2016-001900
Reexamination Control 95/002,084
Patent 8,187,344 B2

20

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