10933712 (B.P.A.I. Sep. 18, 2009)

Ex Parte Barbour et al

Board of Patent Appeals and InterferencesSep 18, 2009

10933712 (B.P.A.I. Sep. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROBERT HOWI BARBOUR, GIDEON FREEMAN and ALAN MARK SCHILOWITZ ____________________ Appeal 2009-011889 Application 10/933,712 U.S. Patent Publication 2005/0102891 Technology Center 1700 ____________________ Decided: September 21, 2009 ____________________ Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and RICHARD TORCZON and SALLY GARDNER LANE, Administrative Patent Judges. McKELVEY, Senior Administrative Patent Judge. DECISION ON APPEAL A. Statement of the case 1 ExxonMobil Research and Engineering Company ("Exxon"), the real 2 party in interest, seeks review under 35 U.S.C. Â§ 134(a) of a final rejection 3 (mailed 15 July 2008). 4 The application was filed on 3 September 2004. Exxon claims 5 benefit of (1) application 10/168,995, filed 15 November 2002, 6 (2) PCT/EP01/00331, filed 12 January 2001 and (3) UK patent application 7 GB000915.5, filed 14 January 2000. 8 Appeal 2009-011889 Application 10/933,712 2 Claim 1-24 are in the application. 1 We have jurisdiction under 35 U.S.C. Â§ 134(a). 2 B. Findings of fact 3 References to the specification are to U.S. Patent Publication 4 2005/0102891. 5 Additional findings as necessary may appear in the Discussion portion 6 of the opinion. 7 Claims on appeal 8 Claims 1-24 are on appeal. 9 (1) Claim 1 10 Claim 1, which we reproduce from the claims appendix of the Appeal 11 Brief, reads [indentation and bracketed matter added]: 12 A composition characterized by an improved response to 13 ashless friction reducing additives comprising 14 (i) a low sulphur gasoline having 15 [1] a sulphur content of less than 30 ppm, 16 [2] a bromine number of less than 10 and 17 [3] an ultraviolet [UV] absorbance at 319 nm 18 below 0.15; and 19 (ii) less than 1000 mg per kg of the low sulphur gasoline 20 of an ashless friction reducing additive which is a fatty 21 acid having 10 to 30 carbon atoms or a derivative thereof 22 selected from the [Group consisting of] 23 [1] alkylamine salts, 24 [2] alkylamides and 25 Appeal 2009-011889 Application 10/933,712 3 [3] alkylesters of such acids and 1 [4] oligomers thereof, 2 wherein the improved response is in comparison to that 3 exhibited by a composition containing the same ashless 4 friction reducing additive but the low sulphur gasoline 5 does not have a bromine number and UV absorbance at 6 319 nm meeting the aforesaid limit [, i.e., the limits set 7 out in (i)[2] and (i)[3]]. 8 (2) Claim 24 9 Claim 24, which we reproduce from the claims appendix of the 10 Appeal Brief, reads [indentation and bracketed matter added]: 11 A method for improving the efficacy of ashless friction 12 reducing additive used in gasoline which additive is a fatty acid 13 having 10-30 carbon atoms or a derivative thereof selected from 14 [the Group consisting of] 15 [1] the alkylamine salts, 16 [2] alkylamides and 17 [3] alkylesters of such acids and 18 [4] oligomers thereof 19 by combining said additive with a low sulfur gasoline at a treat 20 level of less than 1000 mg of additive per kg of gasoline, 21 wherein the gasoline is characterized by having 22 [a] a sulfur content of less that 30 ppm, 23 [b] a bromine number of less than about 10, and 24 Appeal 2009-011889 Application 10/933,712 4 [c] an ultraviolet absorbance at 319 nm 1 below 0.15, 2 the improvement in efficacy being in comparison to the 3 level of efficacy exhibited when the ashless friction reducing 4 additive is added to a low sulfur [gasoline] which does not have 5 a bromine number and an UV absorbance at 319 nm meeting 6 the aforesaid limits [, i.e., the limits set out in [b] and [c]]. 7 Sulphur v. sulfur 8 In claim 1, Exxon uses the UK spelling for sulphur. In claim 24, 9 Exxon uses the U.S. spelling for sulfur. The difference is not significant. 10 Prior art 11 In view of the issue in need of resolution on appeal, it is not necessary 12 to discuss the prior art. To the extent needed, the prior art is analyzed in the 13 Discussion portion of the opinion. 14 C. Discussion 15 The issue on appeal 16 The Examiner found that Exxon's invention involves the use of known 17 fatty acid gasoline additives in known low sulfur gasolines to accomplish 18 reduced friction. In other words, The Examiner found that the Exxon 19 invention involves a combination of known elements all being used for their 20 intended purpose. Exxon does not seriously disagree. 21 Exxon maintains, however, that the invention achieves unexpected 22 results. 23 Appeal 2009-011889 Application 10/933,712 5 The combination of familiar elements according to known methods is 1 likely to be obvious when it does not more than yield predictable results. 2 KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). In resolving 3 obviousness issues, we ask whether the improvement is more than a 4 predictable use of prior art elements according to their established functions. 5 KSR, 550 U.S. at 417. If a person of ordinary skill can implement a 6 predictable variation, Â§ 103 likely bars its patentability. Id. 7 If a claim extends to what is obvious, it is not patentable under Â§ 103. 8 KSR, 550 U.S. at 419. See also In re Muchmore, 58 CCPA 719, 722, 433 9 F.2d 824, 826 (CCPA 1970). For this reason, the USPTO long ago adopted 10 a practice, confirmed by binding court precedent, that any showing of 11 unexpected results based on supposedly unpredictability, must be 12 commensurate in scope with the bread of the claims. See, e.g., In re 13 Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). 14 The dispositive issue in this appeal is whether Exxon has established 15 unexpected results commensurate in scope with the breadth of claims 1 and 16 24â€”the only two claims for which argument is presented in the Appeal 17 Brief. Dependent claims 2-23 stand or fall with claim 1. See 37 C.F.R. 18 Â§ 41.37(c)(1)(vii) (2008). 19 Exxon invention and evidence of unexpected results 20 The Exxon invention relates to low sulphur gasoline compositions 21 which are said to have improved response to friction reducing additives. 22 Specification, Â¶ 0002. 23 Exxon claims to have found that the efficacy of the friction reducing 24 Appeal 2009-011889 Application 10/933,712 6 additives can be significantly improved by mixing friction reducing 1 additives with fuels of specific, predetermined characteristics. Specification, 2 Â¶ 0007. 3 The Exxon invention is a composition comprising (i) a low 4 sulphur gasoline having [1] a sulphur content measured by test method 5 ASTM D 5453-93 of less than 30 ppm, [2] a bromine number measured by 6 test method ASTM D 1159 of less than about 10 and [3] an ultraviolet 7 absorbance at 319 nm below 0.15 and (ii) an effective amount of an ashless 8 friction reducing additive which is a fatty acid having 10-30 carbon atoms or 9 a derivative thereof. Specification, Â¶ 0008. 10 The Examiner found that with respect to bromine number, "a gasoline 11 with a Bromine Number of 30 would have an olefin content of not more than 12 15 percent by volume. Examiner's Answer page. 4. Exxon does not 13 challenge the Examiner's finding. See also Specification, Â¶ 0009 indicating 14 that the bromine number is related to the amount of olefins in a fuel. 15 UV absorbance is determined as follows: (i) fill a 25 cm3 volumetric 16 flask partly full with cyclohexane; (ii) pipette 1.0 cm3 of the sample into the 17 flask and fill the flask to the mark with cyclohexane and mix thoroughly; 18 (iii) fill a clean, dry 1 cm pathlength absorbance cell with the mixture and 19 fill a matching cell with cyclohexane; (iv) measure the difference in 20 absorbance between the two samples at a wavelength of 319 nm. 21 Specification, Â¶ 0008. 22 The ashless friction reducing additive is selected from C10-C30 fatty 23 acids, preferably a C10-C24 fatty acid, or a derivative thereof and mixtures 24 thereof. The ashless friction reducing additives may be derived from 25 Appeal 2009-011889 Application 10/933,712 7 naturally occurring fats and oils and the preferred derivatives are suitably 1 selected from the alkylamine salts, alkyl amides and alkyl esters of such 2 acids and oligomers thereof. An example of an alkyl amine carboxylate salt 3 is n-butylamine oleate or a derivative thereof. An example of a naturally 4 occurring fatty acid is a substance comprising a fatty acid, a tall oil fatty 5 acid or derivatives thereof. Specification, Â¶ 0010 6 n-Butylamine oleate has the formula: 7 CH3â€•(CH2)7â€•CHâ•CHâ€•(CH2)7â€•C(O)Oâ†’ +NH3C4H9 8 Specification, Â¶ 0011 9 One such n-butylamine oleate is commercially sold as a friction 10 modifier as RS124 by Bitrez Ltd. Specification, Â¶ 0012. 11 The substance comprising fatty acids may be either 100% fatty acids, 12 or substantially 100% fatty acids, or may be a mixture of fatty acids and/or 13 tall oil acids or derivatives thereof. Such a mixture suitably contains at least 14 30% w/w, preferably at least 50% w/w of fatty acids. An example of a 15 suitable commercially available substance containing fatty acids is 16 TOLADÂ® 9103 by Baker-Petrolite Ltd. Specification, Â¶ 0013. 17 According to U.S. Patent 6,129,772, cited by Exxon, TOLAD 9103 18 contains approximately 3.8 weight %, stearic acid (a saturated monomeric 19 fatty acid) in a TOLAD specific and complex mixture of unsaturated 20 monomeric and unsaturated oligomeric fatty acids and heavy aromatic 21 solvent. Col. 1:3-42; col. 5:38-42. European Patent Application 0 780 460 22 describes TOLAD 9103 as being a mixture of polymerized fatty acids, 23 non-polymerized fatty acids and heavy aromatic naphtha. Page 2, Â¶ 0013. 24 On the record before us, TOLAD 9103 is a commercial product, but its 25 Appeal 2009-011889 Application 10/933,712 8 precise composition may not be known outside of its makerâ€”Baker-1 Petrolite Ltd. 2 Exxon claims to have found that a gasoline with certain characteristics 3 is much more responsive to the amount of the ashless friction reducing agent 4 than conventional fuels which do not possess the characteristics. A typical 5 example of a suitable gasoline is the so called "Rotterdam gasoline." 6 Experimental data 7 Experimental data is set out in the specification. We assume the data 8 is based on actual experimentation and does not represent prophetic data. 9 See Appeal Brief, page 21, last Â¶. 10 Several fuels with varying degrees of bromine numbers, sulphur 11 content and UV absorbance at 319 nm were tested for their responsiveness 12 to a lubricity additive. Specification, Â¶ 0016. The fuels tested were: 13 1. Fawley (A), 14 2. Neste 95UL, 15 3. Rotterdam, 16 4. Fawley (B) and 17 5. Fawley (C). 18 Both the Rotterdam and the Neste 95UL base gasolines show 19 comparable sulphur contents (0.0027 and 0.0028 wt. %), yet according to 20 Exxon, the Rotterdam fuel is more responsive to lubricity additive. 21 Specification, Â¶ 0016. 22 The responsiveness, as measured by the percentage reduction in 23 friction relative to base fuel (Table 2), is said to be linked to the fuel's 24 substantially lower bromine number and UV absorption at 319 nm. See 25 Appeal 2009-011889 Application 10/933,712 9 Table 1 and note that the measure of UV absorbance and bromine number 1 are both dimensionless quantities. Specification, Â¶ 0016. 2 Table 1 3 4 Fuel and Source Bromine Number % Sulphur by Weight UVA (319 nm) Fawley (A)* 37.72 0.04 0.398 Neste 95UL* 21.7 0.0027 0.323 Rotterdam 4.17 0.0028 0.038 Fawley (B)* 16.11 0.01 0.172 Fawley (C)* 13.28 0.02 0.567 5 *Indicates a test fuel not according to the invention. 6 The fuels were tested at various treat rates to determine the 7 change in coefficient of friction and the mean friction values. The results 8 are tabulated in Table 2 [reproduced below] and Table 3 [not reproduced]. 9 Appeal 2009-011889 Application 10/933,712 10 Table 2 1 2 Base Fuel Additive Treat Rate ml/1000 liters Mean FC âˆ†FC % âˆ†FC Fawley (A) None 0 0.224 Fawley (A) n-BAO 12.5 0.154 0.071 31.5 Fawley (A) ToladÂ® 12.5 0.145 0.079 35.3 Neste 95 UL None 0 0.225 Neste 95 UL n-BAO 12.5 0.152 0.073 32.5 Neste 95 UL ToladÂ® 12.5 0.153 0.072 32.1 Rotterdam # None 0 0.439 Rotterdam # n-BAO 12.5 0.157 0.283 64.4 Rotterdam # ToladÂ® 12.5 0.152 0.287 65.5 Fawley (B) None 0 0.304 Fawley (B) n-BAO 12.5 0.158 0.146 47.9 Fawley (B) ToladÂ® 12.5 0.214 0.090 29.7 Fawley (C) None 0* 0.315 Fawley (C) n-BAO 12.5* 0.204 0.111 35.2 Fawley (C) ToladÂ® 12.5* 0.218 0.097 30.8 3 Mean FC = mean friction coefficient 4 âˆ†FC = Mean FC (base fuel) - Mean FC (additised fuel) 5 %âˆ†FC = [Mean FC (base fuel) - Mean FC (additised fuel)] * 100/Mean FC 6 (base fuel) 7 * By weight, i.e., mg/Kg. 8 # Fuels according to the invention. 9 10 Appeal 2009-011889 Application 10/933,712 11 According to the Appeal Brief, the efficacy of the friction reducing 1 additive was unexpectedly found to be significantly improved. Appeal 2 Brief, page 13. Further according to the Appeal Brief, one skilled in the art 3 would have expected there to be no difference in terms of lubricity based on 4 the gasoline to which the lubricity additive is added. Appeal Brief, page 15. 5 Still further according to the Appeal Brief, it would have been expected that 6 the improvement in lubricity achieved by the addition of the Gentry (U.S. 7 Patent 6,562,086) additives to low sulfur gasoline would be the same or 8 substantially the same as the improvement in lubricity achieved by additives 9 of to low sulfur gasolines of Welsand (U.S. Patent, 6,132,479) and Jossens 10 (U.S. Patent 6,228,254) "because Gentry . . . does not teach, suggest or 11 imply otherwise." Id. See also Appeal Brief, page 16. No reason is given 12 why Gentry would have had an occasion to comment on the matter. What is 13 plainly missing from the record is any testimony explaining why no 14 difference would be expected. See 37 C.F.R. Â§ 1.132. 15 With reference to the data in Table 2, Exxon asserts that doubling of 16 percent change in mean friction coefficient clearly is unexpected, especially 17 in view of the percent change in mean friction coefficients exhibits by other 18 fuels in Table 2. Appeal Brief, page 21. While the percent change is 19 apparent, what is not apparent is why one skilled in the art (as opposed to 20 counsel) would find the Rotterdam fuel âˆ†FC to be unexpected. 21 The Examiner found that one skilled in the art would have expected 22 the result shown by the data in Table 2. Examiner's Answer, page 8. Exxon, 23 of course, says the Examiner's finding is not supported by the record. 24 However, even if Exxon's view of the evidence relied upon by the Examiner 25 Appeal 2009-011889 Application 10/933,712 12 is assumed to be correct, it was not the Examiner's burden to show that any 1 results are expected. Rather, it was up to Exxon's to come forward with 2 credible evidence to show that any difference in results is an unexpected 3 difference. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Exxon might 4 have helped its case with testimony (37 C.F.R. Â§ 1.132) explaining why the 5 Rotterdam fuel âˆ†FC is unexpected. The USPTO was not favored with that 6 testimony. 7 We have not been able to find on this record any credible discussion 8 of why low sulfur gasolines having a bromine number of less than 10 and a 9 UV absorbance of below 0.15 [see claims 1 and 24] would have been 10 expected to have the âˆ†FC results obtained with one fuel having a bromine 11 number of 4.17 and a UV absorbance of 0.038. In other words, the fact that 12 in one instance the âˆ†FC was "doubled" (to use Exxon's words) does not 13 establish why unexpected âˆ†FCs would have been expected with low sulfur 14 gasolines having bromine numbers near 10 and UV absorbances near 0.15. 15 We have been asked to look at the data in Table 2. We have done so. 16 What is critical about a bromine number below 10 in combination with a UV 17 absorption below 0.15? Note that Fawley (B) has a bromine number of 18 16.11 (about 6 higher than Exxon's 10) while Rotterdam has a bromine 19 number of 4.17 (about 6 below Exxon's 10). Where did Exxon's below 10 20 come from? We cannot help but notice that Fawley (B) has a UV absorption 21 of 0.172â€”which is a lot closer to below 0.15 than Rotterdam's 0.038. 22 Where did Exxon's 0.15 come from? While we have considered the data in 23 Table 2, we do not know how it makes out Exxon's case. How does the data 24 Appeal 2009-011889 Application 10/933,712 13 support a showing of unexpected results for the range of bromine numbers 1 and UV absorption numbers claimed? 2 The Examiner found that the data of Table 2 does not show 3 unexpected results commensurate in scope with the breadth of claims 1 4 and 24. Examiner's Answer, page 8; Final Rejection, page 6. The Examiner 5 focused on the fact that Exxon tested only two additives and yet the claims 6 cover numerous additive embodiments. 7 Exxon's response is that demonstration of "two diverse ashless friction 8 modifiers (i.e., fatty acids and amine salts of fatty acids) as being equally 9 enhanced in efficacy when added to the particular gasoline characterized by 10 sulfur content of less than 30 ppm" and the claimed bromine and UV 11 numbers, "clearly supports a claim for similar improvement in efficacy for 12 other ashless friction modifiers similarly based on fatty acids and/or 13 alkylamide or alkylesters of such fatty acids and oligomeric thereof." 14 Appeal Brief, page 27. We understand what counsel is arguing on behalf of 15 Exxon. Unexplained on this record is why one skilled in the art would or 16 would not have agreed with counsel. 17 Part of Exxon's problem with the Examiner's commensurate in scope 18 analysis becomes apparent upon considering the following argument on 19 page 25 of the Appeal Brief [underlining in original]: 20 One the one hand, the Examiner argues that Gentry, 21 teaching only alkanoamide fatty acid or alkanolamide modified 22 fatty acid ashless friction modifier, is of sufficient breath to 23 render obvious a claim reciting ashless friction modifier other 24 than just those of Gentry, while on the other hand the Examiner 25 Appeal 2009-011889 Application 10/933,712 14 argues that two examples of different ashless friction modifiers, 1 both performing similarly and both producing the unexpected 2 doubling of the percent change in mean friction coefficient, are 3 not sufficient to support for claims reciting a broad family of 4 related ashless friction modifiers. 5 Exxon overlooks the applicable burdens of proof and who has to go 6 forward with what evidence. All the Examiner needs to do is establish that 7 one species within the scope of the claims would have been obvious. In re 8 Muchmore, supra. See also Titanium Metals Corp. v. Banner, 778 F.2d 775 9 (Fed. Cir. 1985). On the other hand, once the Examiner establishes a prima 10 facie case of obviousness (a matter not seriously contested in this appeal 11 based on the arguments presented in the Appeal Brief), then Exxon was 12 under a burden to establish unexpected results commensurate in scope with 13 the breadth of the claims. In re Klosak and In re Graselli, supra. 14 Claim 24 15 Exxon has asked that claim 24 be given separate consideration. 16 Appeal Brief, page 34. However, the Exxon argument is that the art does 17 not suggest a method of using the claimed friction modifier with a low sulfur 18 gasoline or the asserted unexpected result which Exxon claims to have 19 achieved. 20 The additives are being used for their known purpose in known fuels 21 to enhance friction resistance. The prior art suggests that if one skilled in the 22 art uses known friction modifiers for their intended purpose, one would 23 expect to get reduced friction. The Fawley and Neste results in Table 2 with 24 and without an additive in prior art gasolines show that enhanced friction 25 Appeal 2009-011889 Application 10/933,712 15 resistance is obtain consistent with the teachings of the prior art. To the 1 extent that Exxon relies on unexpected results, our analysis of the Table 2 2 data connection with claim 1 applies equally to claim 24. 3 We have considered Exxonâ€™s remaining arguments and find none that 4 warrant reversal of the Examinerâ€™s rejections. Cf. Hartman v. Nicholson, 5 483 F.3d 1311, 1315 (Fed. Cir. 2007). 6 D. Decision 7 Exxon has not sustained its burden on appeal of showing that the 8 Examiner erred in rejecting the claims on appeal as being unpatentable under 9 Â§ 103 over the prior art. 10 On the record before us, Exxon is not entitled to a patent containing 11 claims 1-24. 12 Upon consideration of the appeal, and for the reasons given herein, 13 it is 14 ORDERED that the decision of the Examiner rejecting 15 claims 1-24 over the prior art is affirmed. 16 FURTHER ORDERED that no time period for taking any 17 subsequent action in connection with this appeal may be extended under 18 37 C.F.R. Â§ 1.136(a)(1)(iv) (2008). 19 AFFIRMED ack Appeal 2009-011889 Application 10/933,712 16 cc (via First Class mail) ExxonMobil Research & Engineering Company P.O. Box 900 1545 Route 22 East Annandale NJ 08801-0900