Ex Parte BROD et al

Board of Patent Appeals and Interferences

Jul 31, 2001

08356194 (B.P.A.I. Jul. 31, 2001)

The opinion in support of the decision being entered today
was not written for publication and is not precedent of
the Board.

Paper No. 18

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAHAM BROD, BRIAN DAVIES, and TUNCEL IBRAHIM
____________

Appeal No. 1998-1216
Application No. 08/356,194
____________

BRIEF
____________

Before TIMM, DELMENDO, and PAWLIKOWSKI, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4-8, 10-12, and 16-26, which are all
of the claims pending in this application. Claims 3, 9,
and 27 were cancelled in the Amendment of Paper No. 5.
Claims 2, 13, 14, and 15 were cancelled in the Amendment
After Final Rejection of Paper No. 9. No claims have been
allowed.
The subject matter on appeal is illustrated in claim 1,
which reads as follows:

1. A fuel oil composition comprising a fuel oil and
an additive composition comprising:

Appeal No. 99-1216
S.N. 08/356,194

2
(a) an oil soluble ethylene copolymer having, in addition
to units derived from ethylene, units of the formula

-CH2-CRR1- I

and units of the formula

-CH2-CRR2- II

the total molar proportion of units of the formulae I and
II in the copolymer being less than 10%, wherein each R
independently represents H or CH3, and each R1 and R2
independently represents a group of the formula COOR3 or
OOCR3, wherein each R3 independently represents alkyl or
alkenyl having 4 to 10 carbon atoms provided that the
units of the formula I are different from the units of the
formula II or

(b)comprising

(i) an oil-soluble ethylene copolymer having, in addition to
units derived from ethylene, less than 10 molar per cent
of units of the formula

-CH2-CRR1- I

and (ii) an oil-soluble ethylene copolymer having, in addition
to units derived from ethylene, less than 10 molar per cent of
units of the formula

-CH2-CRR2- II

wherein R, R1, and R2 have the meaning given above, provided that
R3 in COOR3 represents alkyl or alkenyl having 4 to 10 carbon
atoms, and provided that copolymer (i) differs from copolymer
(ii) by at least 2000 in number average molecular weights.

The references relied upon by the examiner are as follows:
Toyoshima et al.(Toyoshima) 4,404,000 Sep. 13, 1983
Feldman 4,211,534 Jul. 8, 1980
Ilnyckyj et al. (Ilnyckyj) 3,961,916 June 8, 1976

Appeal No. 99-1216
S.N. 08/356,194

3
Claims 1, 4-8, 10-12, and 16-26 stand rejected under
35 U.S.C. § 103 over Toyoshima in view of Ilnyckyj and
further in view of Feldman.

OPINION

For the reasons set forth below, we reverse the above-
noted rejection.
The examiner’s position is that it would have been
obvious to one of ordinary skill in the art to have
substituted the copolymer (A) of Toyoshima with the
butylacrylate disclosed in Ilnyckyj, in view of the
disclosure found in column 5, lines 6-8 of Ilnyckyj.
(answer, pages 4-5).
Appellants argue that there is no teaching in
Ilnyckyj or Toyoshima to suggest to one skilled in the art
to substitute the materials of Ilnyckyj for the copolymer
(A) of Toyoshima. Appellants argue that the particular
copolymer (A) of Toyoshima must have an alkoxyalkyl group,
and that the examiner’s proposed substitution contradicts
this aspect of Toyoshima’s invention. (brief, page 4).
We note that the initial burden of presenting a prima
facie case of unpatentability on any ground rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We also note that
obviousness can be established by combining or modifying
the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or
motivation to do so found either in the references or in
the knowledge generally available to one of ordinary skill
in the art. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
Appeal No. 99-1216
S.N. 08/356,194

4
1596, 1598 (Fed. Cir. 1988). The mere fact that references
can be combined or modified does not render the resultant
combination obvious unless the prior art also suggests the
desirability of the combination. In re Mills, 916 F.2d
680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990).
Here, we find the examiner has not convincingly
explained why one skilled in the art would have been
motivated to substitute the copolymer (A) of Toyoshima with
the butylacrylate disclosed in Ilnyckyj. It appears that
the examiner believes that because the butylacrylate is
grouped with a C13oxoalkylmethacrylate at column 5, lines 6-
8 of Ilnyckyj, these compounds are equivalent and therefore
each would achieve the same results. (answer, pages 4-5).
However, this disclosure of Ilnyckyj does not teach that
the butylacrylate is equivalent to the particular copolymer
(A) of Toyoshima, especially in the context of Toyoshima
(i.e., combining with copolymer (B)). Furthermore, we
agree with appellants’ statement that the copolymer (A) of
Toyoshima requires an alkoxyalkyl group, and therefore,
there is no motivation to replace it with a non-alkoxyalkyl
group type compound, as proposed by the examiner. (brief,
page 4).
The examiner discusses Table 4 of Toyoshima. (answer,
page 5). We find that Table 4 establishes that examples 1-
7 achieve good results with respect to pour point values
and cold filter plugging point values. These examples
involve the use of Toyoshima’s particular copolymer (A)
with copolymer (B), wherein the copolymer (A) requires an
alkoxyalkyl group. Examples 1-7 achieves better cold
filter plugging point values than all of the other
Comparative Examples listed in Table 4. This shows that the
Appeal No. 99-1216
S.N. 08/356,194

5
combination of copolymer (A), having an alkoxyalkyl group,
with copolymer (B) achieves improved results. These
results refute that examiner’s interpretation of Table 4.
In view of the above, we find that the examiner has
not met her burden of establishing a prima facie case, and
we reverse. We need not discuss the reference of Feldman,
as this reference does not cure the above-mentioned
deficiencies found in Toyoshima and Ilnyckyj.

SUMMARY
The rejection of claims 1, 4-8, 10-12, and 16-26 under
35 U.S.C. § 103 over Toyoshima in view of Ilnyckyj, and
further in view of Feldman, is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

REVERSED

)
CATHERINE TIMM )
Administrative Patent Judge )
)
)
)BOARD OF
)PATENT
ROMULO DELMENDO )APPEALS
Administrative Patent Judge )AND
)INTERFERENCES
)
)
)
BEVERLY PAWLIKOWSKI )
Administrative Patent Judge )

Appeal No. 99-1216
S.N. 08/356,194

6

Paul D. Greeley, Esq.
Ohlandt, Greeley, Ruggiero & Perle
One Landmark Square, Suite 903
Stanford, Connecticut 06901