Ex Parte Clark et al

Board of Patent Appeals and Interferences

Jul 20, 2010

10511127 (B.P.A.I. Jul. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/511,127 10/13/2004 Richard Hugh Clark TS7609US 9323
7590 07/20/2010
Shell Oil Company
Intellectual Property
PO Box 2463
Houston, TX 77252-2463
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
07/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RICHARD HUGH CLARK,
GAUTAM TAVANAPPA KALGHATGI, and ELEANOR MAIR LINEY
__________

Appeal 2009-014635
Application 10/511,127
Technology Center 1700
__________

Before ERIC GRIMES, MICHAEL P. COLAIANNI, and BEVERLY A.
FRANKLIN, Administrative Patent Judges.

ERIC GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of increasing the cetane number of a gas oil product. The Examiner has

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/511,127

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rejected the claims for obviousness and obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification states that “[c]ommercially available blends of
petroleum derived gas oil and Fischer-Tropsch derived gas oil are known.
. . . From various publications it is assumed that the cetane number of the
final blend will comply with linear blending rules.” (Spec. 1.) The
Specification states that, however, “the addition of a certain volume of
Fischer-Tropsch derived gas oil to a petroleum derived gas oil results in a
higher cetane number than would be expected based on linear blending
rules” (id. at 2-3).
Claims 1-8 are on appeal. The claims have not been argued separately
and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is
representative and reads as follows:
1. A method of increasing the cetane number of a gas oil product
based on a petroleum derived gas oil to a target cetane number Y
comprising: adding to the petroleum derived gas oil a volume amount of a
Fischer-Tropsch derived gas oil having a higher cetane number B, than the
petroleum derived gas oil of cetane number, A, wherein the volume amount
of added Fischer-Tropsch derived gas oil is less than the volume amount
which would be added if linear blending is assumed.

The claims stand rejected as follows:
• Claims 1-8 under 35 U.S.C. § 103(a) as obvious in view of Suppes2
or Berlowitz3 (Ans. 3) and

2 Suppes, US 6,056,793, May 2, 2000
3 Berlowitz et al., US 6,663,767 B1, Dec. 16, 2003
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• Claim 1 for obviousness-type double patenting based on claim 20 of
U.S. Patent 7,189,269 (Ans. 3).
I.
Issue
The Examiner has rejected claims 1-8 as obvious in view of either
Suppes or Berlowitz. Because we conclude that Berlowitz supports the
rejection, we need not address the alternative basis of the rejection.
The Examiner finds that Berlowitz discloses “a diesel fuel blended
fuel composition which comprises an undercut conventional diesel fuel and
a Fischer-Tropsch derived diesel fuel” (Ans. 4) and therefore would have
made obvious the claimed method, which merely requires adding a volume
amount of a Fischer-Tropsch derived gas oil to a petroleum-derived gas oil
(id. at 5). The Examiner concludes that the “wherein” clause of claim 1 does
not distinguish the claimed process from Berlowitz’s “since the blending
components and the amount of each component may be the same” (id.).
Appellants contend that “Berlowitz does not teach applicants[’]
claimed invention which is a very specific method of increasing the cetane
number of a gas oil product which involves adding less than a particular
amount of Fischer-Tropsch derived gas oil which would be added if linear
blending is assumed” (Appeal Br. 4).
The issue with respect to this rejection is: Does the recitation in claim
1 that “the volume amount of added Fischer-Tropsch derived gas oil is less
than the volume amount which would be added if linear blending is
assumed” distinguish the claimed method from the method disclosed by
Berlowitz?
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Findings of Fact
1. Berlowitz discloses “a blended fuel, useful as diesel fuel, wherein
the fuel blend contains an undercut conventional diesel fuel, blended with a
Fischer-Tropsch derived diesel fuel. . . . The resultant diesel fuel blend is
characterized by . . . Cetane number >50, preferably >55, more preferably
>60.” (Berlowitz, col. 2, ll. 17-41.)
2. Berlowitz discloses that the Fischer-Tropsch derived component of
its blended fuel has a cetane number of at least 65, preferably at least 70 (id.
at col. 4, ll. 49-59).
3. Berlowitz provides a working example in which equal parts of a
conventional diesel fuel and a heavy Fischer-Tropsch diesel fuel were
blended; the resulting blend had a cetane number of 61.5 (id. at col. 6, ll. 27-
29 and 45).
4. The Specification provides a working example in which a
petroleum-derived gas oil with a cetane number of 51.1 is mixed with a
Fischer-Tropsch derived gas oil with a cetane number of either 77.3 (FT1) or
75.8 (FT2) (Spec. 9-10).
5. The Specification discloses that a 50/50 mixture of the petroleum-
derived gas oil and FT1 has a cetane number of 69.3 (id. at 11, Table 2, third
line) a 50/50 mixture of the petroleum-derived gas oil and FT2 has a cetane
number of 65.4 (id. at 11, Table 3, third line).
Analysis
Claim 1 is directed to a method of increasing the cetane number of a
petroleum-derived gas oil by blending it with a Fischer-Tropsch-derived gas
oil. Berlowitz discloses mixing a petroleum-derived conventional diesel fuel
with a Fischer-Tropsch-derived diesel fuel. Berlowitz discloses that the
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Fischer-Tropsch-derived fuel has a cetane number of at least 65 and the final
blend has a cetane number of greater than 50. Since the cetane number of
the final blend depends on the cetane number of both fuel components, it is
reasonable to conclude that the cetane number of the blend is higher than the
cetane number of the petroleum-derived component; i.e., the cetane number
of the petroleum-derived component is increased when it is blended with the
Fischer-Tropsch-derived component.
Appellants argue that the claimed process differs from Berlowitz’s
because the claim requires “adding less than a particular amount of Fischer-
Tropsch derived gas oil which would be added if linear blending is
assumed” (Appeal Br. 4). That is, Appellants argue that the “wherein”
clause of claim 1 distinguishes the claimed process from that of Berlowitz.
We do not agree with Appellants’ interpretation of the claim
language. As the Examiner has correctly pointed out, the claimed method
requires only the single step of blending a petroleum-derived gas oil and a
Fischer-Tropsch-derived gas oil. The claim does not limit the amounts of
the two components that are mixed, which will depend on the cetane
numbers of the starting materials and the target cetane number of the final
blend.
As one example, the Specification describes blending equal parts of a
petroleum-derived gas oil and a Fischer-Tropsch-derived gas oil to make a
product with a cetane number of 65.4 (FF 5). Berlowitz describes blending
equal parts of a petroleum-derived fuel and a Fischer-Tropsch-derived fuel
to make a product with a cetane number of 61.5 (FF 3). Although
Berlowitz’s product has a slightly lower cetane number than the one
exemplified in the Specification, the process described by Berlowitz
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includes the only active step required by claim 1 on appeal. That is, while
Appellants might carry out the process described by Berlowitz with an
intention of achieving a product with a different cetane number, the two
processes themselves are the same. The “wherein” clause of claim 1 does
not impose any additional limitation on how the claimed process is carried
out.
Appellants also repeat in the Appeal Brief the limitations of claims 2
and 3 but do not provide any argument based on those limitations (Appeal
Br. 4-5). “A statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim.” 37
C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
The recitation in claim 1 that “the volume amount of added Fischer-
Tropsch derived gas oil is less than the volume amount which would be
added if linear blending is assumed” does not distinguish the claimed
method from the method disclosed by Berlowitz.
II.
The Examiner has rejected claim 1 for obviousness-type double
patenting on the basis that the claimed process is not patentably distinct from
that of claim 20 of the ‘269 patent (Ans. 3).
Appellants contend that claim 1 is directed to “a very specific method
of increasing the cetane number of a gas oil product which involves adding
less than a particular amount of Fischer-Tropsch derived gas oil” (Appeal
Br. 4). As discussed above in the context of obviousness, however, the
method defined by claim 1 requires only a single step: blending a
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petroleum-derived gas oil and a Fischer-Tropsch-derived gas oil, and is not
limited to mixing particular amounts of the two components.
Claim 20 of the ‘269 patent reads as follows: “20. A process for the
preparation of a fuel composition, said process comprising blending a
Fischer-Tropsch derived gas oil (ii) and an oxygenate (iii) with a base fuel
(i)” (‘269 patent, col. 18, ll. 4-6). The ‘269 patent defines a base fuel as
including “petroleum derived gas oils” (id. at col. 5, ll. 1-3).
We agree with the Examiner that the ‘269 patent’s claim 20 includes
the step of blending a petroleum-derived gas oil and a Fischer-Tropsch-
derived gas oil, along with an oxygenate, and therefore includes the sole step
required by instant claim 1. In effect, the ‘269 patent’s claim 20 is a species
encompassed by instant claim 1. “[A] later genus claim limitation is
anticipated by, and therefore not patentably distinct from, an earlier species
claim.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 971 (Fed. Cir.
2001). We affirm the rejection of claim 1 based on obviousness-type double
patenting.
SUMMARY
We affirm the rejection of claims 1-8 as obvious in view of Berlowitz
and the rejection of claim 1 for obviousness-type double patenting.
TIME PERIOD FOR RESPONSE
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

Appeal 2009-014635
Application 10/511,127

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SHELL OIL COMPANY
INTELLECTUAL PROPERTY
PO BOX 2463
HOUSTON TX 77252-2463