Ex Parte 8,187,344 B2 et al

Patent Trial and Appeal Board

Nov 29, 2017

95002084 (P.T.A.B. Nov. 29, 2017)

UNITED STATES PATENT AND TRADEMARKOFFICE
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 11/30/2017
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
11/30/2017 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 REHEARING
Appeal 2016-001900
Reexamination Control 95/002,084
Patent 8,187,344 B2

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In a Decision on Appeal issued September 28, 2016 (“Decision”), the
panel affirmed the Examiner’s rejections of claims 4, 11, 13, and 36-38 of
United States Patent 8,187,344 B2 (hereinafter the “’344 Patent”).
In particular, the panel affirmed the Examiner’s rejections of 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. (Decision 4, 18.)
Patent Owner requests rehearing of the decision affirming the
Examiner’s rejection of the claims under 37 C.F.R. § 41.79. Request for
Rehearing (“Request” or “Req. Reh’g”) dated October 28, 2016. Requester
submitted comments on Patent Owner’s Request for Rehearing on
November 28, 2016 (hereinafter “Comments”).
Patent Owner contends that the Board misapprehended or overlooked
the following points:
1. The Board failed to properly construe the claim terms
“isomerizing” and “consists of at least one component”.
(Request 2–6.)
2. The Board misapprehended the differences between Miller’s
hydrocracked wax and the claimed isomerized diesel fuel.
(Request 6–8.)
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3. The Board improperly shifted the burden to Patent Owner to show
that the ordinary skilled artisan would not have been able to adjust
isomerization conditions to obtain the combination of properties
recited in the claims. (Request 8–9.)
We address the points raised in Patent Owner’s request to the extent
they comply with 37 C.F.R. § 41.79.

Claim Interpretation
“isomerizing”
Patent Owner contends that the Board failed to construe the term
“isomerizing” and as such did not provide an explanation of why the
broadest reasonable interpretation of “isomerizing” could include the distinct
chemical process of hydrocracking. (Request 4.)
Requester contends that Patent Owner waived any arguments with
respect to the term “isomerizing” by not including such arguments in Patent
Owner’s Appeal Brief. (Comments 2–3.) Requester argues that Patent
Owner’s proposed claim construction would not change the obviousness
conclusion in the Decision because the Board did not rely on Miller’s
working examples for isomerization, but rather only for increasing the iso-
to-normal paraffin ratio. (Comments 3–4.) Requester contends also that the
claim language does not exclude hydrocracking because the claims require
only that the processes comprise an isomerizing step and isomerizing and
hydrocracking commonly proceed concurrently. (Comments 4–6.)
In the Decision, we addressed Patent Owner’s argument regarding the
Examiner’s view of hydrocracking and isomerization, stating:
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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.)

(Decision 12.)
Thus, as pointed out in the Decision and by Requester, there are no
points misapprehended or overlooked in the interpretation of hydrocracking
and isomerization that would have impacted the obviousness analysis. (See
Decision 10–11.)

“consists of at least one component”
Patent Owner contends that in conjunction with the term
“isomerizing,” Miller’s hydrocracking examples with a non-biological raw
material would not be pertinent to the claims directed to isomerization of a
hydrogenated biological raw material, because the claims are closed to
components produced by hydrocracking. (Request 5–6.)
Requester argues that Patent Owner did not dispute the Examiner’s
construction of “consists of at least one component” in its Appeal Brief, and
as a result the Board should refuse rehearing on this issue. (Comments 6–7.)
Requester contends also that the claimed process is defined as “comprising”
certain steps and is therefore open to additional process steps and
components. (Comments 7–8.) Requester argues that as a result the claims
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read on a process where both hydrocracking and isomerization take place.
(Comments 8.)
The Decision did not misapprehend or overlook any aspects related to
the phrase “consists of at least one component” in relation to the rejection of
the claims based on Miller, Monnier, and Corma. As detailed in the
Decision, the Examiner’s rejection relies on application of isomerization
taught by Miller and Corma to the feedstock of Monnier to improve low
temperature properties. (Decision 5–6, citing RAN 11.) The Decision
analyzes the Examiner’s rejection on this basis, and as such does not rely on
the hydrocracking disclosure in Miller in affirming the Examiner’s rejection
of the claims. (Decision 10–12.)

Differences between Miller’s hydrocracked wax and the claimed
isomerized diesel fuel
Patent Owner contends that the Board failed to appreciate that the low
carbon number paraffins with low melting points would be present in
Miller’s diesel cut and would be largely responsible for Miller’s disclosed
turbidity points. (Request 6–7.) Patent Owner argues that in stating that the
diesel cuts in the FT n-paraffins would be compositionally similar to the n-
paraffins produced from animal fats, the Board misapprehended the
difference in the presence and amount of low carbon number paraffins
between Miller’s hydrocracked FT wax and a hydrogenated and isomerized
biological feedstock as well as the effect of this difference on turbidity point.
(Request 7–8.) In particular, Patent Owner points out that the diesel cut of
the Fischer Tropsch waxes in Miller would include low carbon number
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paraffins from hydrocracking, such as C10, that would depress turbidity
point. (Request 6–7.) Patent Owner argues that the fatty acid distribution
for a tall oil fatty acid subject to isomerization would not contain any
paraffins having a carbon number below C16 (citing evidence that certain C16
paraffins have melting points of -9.7 and -29.9 ˚C) and as such the Board
misapprehended the compositional difference between Miller’s
hydrocracked product and the claimed isomerized product in reference to
what one of ordinary skill in the art would have expected in achieving the
same low turbidity points as Miller. (Request 7–8.)
Requester contends that the Board findings regarding the
understanding of one of ordinary skill in the art based on Miller are
supported by the evidence of record. (Comments 8–10.) Requester argues
that Patent Owner fails to address the findings made by the Board with
respect to Miller and Corma as to using isomerization catalysts to provide
diesel fuels with iso-to-normal paraffin ratios of at least about 30:1 and
improving cold flow properties of diesel fuels through isomerization of
linear paraffins, respectively. (Comments 8–9.)
We are not persuaded that we misapprehended or overlooked the
teachings of Miller in affirming the Examiner’s decision to reject the claims
over the combination of Miller, Monnier, and Corma. The Decision
expressly considered Patent Owner’s argument with respect to the presence
of molecules having low carbon numbers contributing to Miller’s reported
lower turbidity points. (Decision 11.) The Decision explains that Miller
discloses that isomerization may be used to adjust isoparaffin to normal
paraffin ratio and that both Miller and Corma support the Examiner’s
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position that isomerization was a well-known method for improving the low
temperature properties of diesel fuels. (Decision 11; Decision 8–9, FF 6–8.)
The Decision expressly addresses the disclosure of Monnier with reference
to feedstocks including those derived from animal fats including animal
tallow feedstocks. (Decision 8, FF 5, 6; Decision 11–12.)
Patent Owner’s reference to the fatty acid distribution for a tall oil
fatty acid does not provide a basis for any points misapprehended or
overlooked in the findings of fact and analysis set forth in the Decision in
relation to the carbon numbers present in feedstocks derived from animal
fats and what one of ordinary skill in the art would have reasonably expected
from isomerizing such feedstocks. Moreover, Patent Owner does not
provide any basis that the Decision misapprehended or overlooked that one
of ordinary skill in the art would have understood that isomerization was a
well-known method for improving the low temperature properties of diesel
fuels as taught in Miller and Corma.

Legal Burden
Patent Owner argues that the Board improperly required Patent Owner
to prove that one of ordinary skill in the art would not have been able to
obtain the combined properties of the specific turbidity point and cetane
number recited in the claims. (Request 8–9, citing Decision 16 (“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.”).)
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Requester contends that the Board did not misapprehend or overlook
the applicable burdens, but rather found support for the Examiner’s rejection
of the claims as obvious over Monnier, Miller, and Corma. (Comments 11–
12.) Requester argues that the Board merely commented that Patent Owner
failed to provide sufficient evidence to outweigh the evidence in favor of
obviousness. (See Comments 12.)
We are not persuaded that we misapprehended or overlooked the legal
burdens associated with obviousness. The Decision analyzes the Examiner’s
rejection over the prior art by evaluating both the evidence in favor of
obviousness as well as the evidence against obviousness, finding that a
preponderance of the evidence supports the Examiner’s position that the
claims would have been obvious. (Decision 10.)
Patent Owner dismisses this analysis by characterizing the findings in
the Decision as “generalized.” (Request 9.) We disagree with Patent
Owner’s characterization. The Decision sets forth findings of fact and
analysis that are sufficiently specific and commensurate with the amount of
detail set forth in the appealed claims, and further discusses the evidence
presented in this proceeding in detail. (Decision 7–17.) The statements in
the Decision pointed to by Patent Owner were, as correctly observed by
Requester, only to indicate that in considering all of the evidence of record,
the evidence relied on by Patent Owner was insufficient to outweigh the
evidence supporting the obviousness of the claims.

Appeal 2016-001900
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Patent 8,187,344 B2

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Therefore, we decline to make any changes in the Decision mailed
September 28, 2016. Accordingly, the Request for Rehearing is denied.

DENIED

PATENT OWNER:
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 New York Avenue, NW
Washington, DC 20001-4413

THIRD-PARTY REQUESTER:
FOLEY & LARDNER LLP
3000 K Street, NW
Suite 600
Washington, DC 20007-5109