Ex Parte Bosch

Patent Trial and Appeal Board

Mar 25, 2014

10557870 (P.T.A.B. Mar. 25, 2014)

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
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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

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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

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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

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