Ex Parte BoschDownload PDFPatent Trial and Appeal BoardMar 25, 201410557870 (P.T.A.B. Mar. 25, 2014) Copy Citation 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. 10/557,870 11/22/2005 Willem Bosch TS 8584 USA P 4903 23632 7590 03/25/2014 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER WEISS, PAMELA HL ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 03/25/2014 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 ____________ Ex parte WILLEM BOSCH ____________ Appeal 2012-008301 Application 10/557,870 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and DONNA M. PRAISS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejections under 35 U.S.C. § 103(a) of (a) claims 1-36 over Hemighaus1; (b) claims 1, 3-17, 19-27, and 29-36 over Hemighaus in view of Tanaka2, Calemma3, Benner4, 1 US 2003/0116469 A1, published June 26, 2003. 2 US 5,851,381, patented December 22, 1998. 3 EP 1 101 813 A1, published May 23, 2001. 4 US 3,775,297, patented November 27, 1973. Appeal 2012-008301 Application 10/557,870 2 Wittenbrink5, Watson6, Rao7, and Rand8; (c) claims 1, 3-17, 19-27, and 29-36 over Berlowitz9 in view of Egan10, Tanaka, Calemma, Benner, Rao, and Rand; (d) claims 2, 18, and 28 over the references of (c) and further in view of Kuno11; and (e) claims 2, 18, and 28 over the references of (b) and further in view of Kuno. Upon consideration of the evidence on this record and Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claims on appeal are unpatentable over the applied prior art. We sustain the above rejections based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer. We add the following for emphasis. Appellant’s mere recitation of the advantages obtained by the specific processes claimed herein with a naked assertion that these processes and advantages are not found in the prior art does not rise to a substantive argument explaining why the Examiner erred. Ex Parte Shen, No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI Sep. 4, 2008) (“[I]t is not the function of this Board to examine claims in greater detail than argued by an appellant, looking for distinctions over the prior art.”); see also 37 CFR 41.37(c)(iv)(2010). Indeed, as 5 US 5,766,274, patented Jun. 16, 1998. 6 Watson, K.M., et al., “Characterization of Petroleum Fractions”, Ind. Eng. Chem. 1935, 27 (12), pp. 1460-1464 (01 May 2002). 7 Rao, B.Venkata, et al., “User interactive computer program for estimation of Watson characterization factor and surface tension of undefined petroleum fractions”, Fuel, Vol. 70, Issue 6, pp. 795-797 (1991) (Abstract only). 8 Rand, Salvatore J., Significance of Tests for Petroleum Products, 7th Ed. (2003). This reference is more properly characterized as Strauss, Kurt H., “Aviation Fuels”, Significance of Tests for Petroleum Products, 7th Ed., Chapter 2, pp. 3-22 (2003). 9 US 6,180,842 B1, patented January 30, 2001. 10 US 3,630,885, patented December 28, 1971. 11 US 4,424,117, patented January 3, 1984. Appeal 2012-008301 Application 10/557,870 3 the Examiner notes, Appellant fails to identify which limitation of the method is allegedly not disclosed (Ans. 19). The Examiner has made extensive specific fact findings with respect to the claims on appeal, none of which Appellant challenges. As to the advantages Appellant urges that the prior art fails to recognize, the Examiner specifically finds Hemighaus discloses blending a petroleum-derived feed stream with a highly paraffinic distillate to produce a salable jet fuel provides significant economic advantage (id. at 21). Although Appellant also asserts the prior art does not disclose the advantage of reduced product quality give away, Appellant fails to explain why such a result would not naturally flow from the prior art’s blending of petroleum-derived and Fischer Tropsch-derived feed stocks. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious.”) The decision of the Examiner is 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 sld Copy with citationCopy as parenthetical citation