Ex Parte Choo et al

Patent Trial and Appeal Board

Jun 14, 2016

12085555 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/085,555 07/29/2008
127226 7590 06/16/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Yuen May Choo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3587-0131PUS1 9449
EXAMINER
HINES, LATOSHA D
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
06/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUEN MAY CHOO, SIT POON CHENG,
AH NGAN MA, and YUSOF BASIRON
Appeal2014-004336
Application 12/085,555
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 5, 6, and 12-15. We have jurisdiction.
35 U.S.C. § 6(b). An oral hearing was held on June 7, 2016.2
We REVERSE.
1 According to the Appellants, the real party in interest is MALAYSIAN
PALM OIL BOARD. Appeal Br. 1.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2014-004336
Application 12/085,555
STATEMENT OF CASE
Appellants describe the present invention as an aviation fuel
composition comprising biofuel. Spec. 1:4--5. Claim 1, reproduced below,
is the only independent claim on appeal and is illustrative of the claimed
subject matter:
1. An aviation fuel composition comprising
a) a jet fuel;
b) one or more alkyl esters obtained from a reaction between:
i) Cs - C10 saturated fatty acids; and
ii) C1 - C4 monohydric alcohols;
wherein the one or more alkyl esters is selected from the group
consisting of methyl caprylate, isopropyl caprylate, 2-butyl
caprylate, isobutyl caprylate, n-butyl caprylate, and 2-butyl
caprate;
wherein the one or more alkyl esters is blended with jet fuel in
an amount up to 50 % (vol/vol).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Orr
Sutkowski
Oku et al.
(hereinafter "Oku")
Valentine
US 2005/0044778 Al Mar. 3, 2005
US 2005/0183325 Al Aug. 25, 2005
US 2007 /0167642 Al July 19, 2007
WO 02/10317 Al Feb. 7,2002
3 In this decision, we refer to the Non-Final Office Action mailed October
16, 2012 ("Non-Final Act."), the Appeal Brief filed March 18, 2013
("Appeal Br."), and the Examiner's Answer mailed July 9, 2013 ("Ans.").
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Appeal2014-004336
Application 12/085,555
REJECTIONS
The Examiner made the following rejections:
Rejection 1. Claims 1, 2, and 12-14 are rejected under 35 U.S.C.
§ 103 as unpatentable over Valentine. Non-Final Act. 2-3.
Rejection 2. Claim 5 is rejected under 35 U.S.C. § 103 as
unpatentable over Valentine in view of Oku. Id. at 5.
Rejection 3. Claim 6 is rejected under 35 U.S.C. § 103 as
unpatentable over Valentine in view of Oku and further in view of Orr. Id.
Rejection 4. Claim 15 is rejected under 35 U.S.C. § 103 as
unpatentable over Valentine in view of Sutkowski. Id. at 6.
ANALYSIS
The Examiner rejects claim 1 as obvious over Valentine. Valentine
teaches a diesel fuel blend "modified for use in diesel engines" and
especially "suitable to power buses in metropolitan areas where emissions
are of special concern." Valentine 1. The Examiner finds that one
component of Valentine's fuel is commercially available jet fuel. Ans. 7
(citing Valentine 3). Appellants, however, argue that Valentine does not
teach an aviation fuel composition. We agree.
Our analysis begins with construction of claim 1. The preamble of
claim 1 recites "[a]n aviation fuel composition comprising." We conclude
that this recitation limits the scope of claim 1. We reach this conclusion
because, for example, the Specification emphasizes that the invention is
directed to an aviation fuel (Spec. Title, 1) and that aviation fuel must fulfill,
for example, low freezing point requirements (id. at 2). Also, several of the
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Appeal2014-004336
Application 12/085,555
claims at issue rely upon the preamble's recitation for antecedent basis (see
claims 12-15), and Appellants unambiguously agreed both in oral argument
and in briefing that all claims are directed at aviation fuel. See, e.g., Appeal
Br. 6 (referring to "the aviation fuel of the present invention" and arguing
that a person of skill would have no reason to "develop an aviation fuel
composition" from the Valentine disclosure).
With this claim construction in mind, we evaluate the Examiner's
obviousness analysis. Valentine teaches a diesel fuel. Valentine 1. The
Examiner finds that Valentine states that its fuel is a jet fuel or diesel fuel.
Non-Final Act. 7 (citing Valentine 1-2). We disagree with this finding of
fact. The cited portions of Valentine are best understood as teaching a blend
"based on a biologically-derived stock and a base fuel" where the base fuel
was designed for use in jet engines but modified for use in diesel engines.
Valentine 1. Although the fuel has a jet fuel component (id. at 2), we do not
understand Valentine teaching that its fuel could be used in an airplane.
Appellants persuasively explain that aviation fuel has different
considerations and composition than diesel fuel. Appeal Br. 5. For
example, aviation fuel must have a composition that has a low freezing point
at high altitude. Id. The Examiner does not persuasively explain why a
person of skill in the art would have been motivated to modify the diesel fuel
of Valentine in order to create aviation fuel. Thus, we do not sustain the
Examiner's rejection of claim 1.
Claims 2, 5---6, and 12-15 all depend from claim 1. The Examiner
relies upon only Valentine in rejecting claims 2 and 12-14, and we therefore
do not sustain these rejections for the reasons explained above. We likewise
do not sustain the Examiner's rejections of claims 5, 6, and 15 because the
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Appeal2014-004336
Application 12/085,555
Examiner's explanation of the Oku, Orr, and Sutkowski references in
rejecting those claims does not resolve the underlying deficiency in the
primary Valentine reference. Non-Final Act. 5---6.
DECISION
For the above reasons, we reverse Examiner's rejection of claims 1, 2,
5, 6, and 12-15.
REVERSED
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