Ex Parte Deetman

Board of Patent Appeals and Interferences

Jan 5, 2011

09801883 (B.P.A.I. Jan. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERBRAND DEETMAN
____________

Appeal 2010-000238
Application 09/801,883
Technology Center 1700
____________

Before ALLEN R. MACDONALD, LINDA E. HORNER, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

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 09/801,883

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting pending claims 131-152 in reissue application
09/801,883. Reissue application 09/801,883 seeks to reissue U.S. Patent
5,464,551, issued November 7, 1995 (the ‘551 Patent). We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to a combination of additives for
mixing with a phosphate ester based aircraft hydraulic fluid including an
acid scavenger, an anti-erosion additive, a viscosity index improver, and an
anti-oxidant. (Col. 2, l. 65 – col. 3, l. 11.)
Claims 131-152 were added by reissue. Claim 131 is illustrative (with
underlining indicating that the claim was added by reissue):
131. A novel combination of additives useful for mixing with
phosphate ester based aircraft hydraulic fluids comprising:
(a) an acid scavenger comprising an epoxide compound;
(b) an anti-erosion additive comprising an alkali metal
salt of a perfluoroalkyl sulfonic acid;
(c) a viscosity index improver comprising a methacrylate
ester polymer at least 95% by weight of the polymer
having a molecular weight of between about 50,000 and
1,500,000; and
(d) an antioxidant wherein said antioxidant is selected
from the group consisting of a hindered phenol and said
hindered phenol in combination with an amine
compound.

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Appellant seeks review of the Examiner’s rejection of claims as
follows:
1. claims 131-152 under 35 U.S.C. § 251 as being an improper
recapture of broadened subject matter surrendered in the application for the
‘551 patent, upon which the present reissue application is based;
2. claim 131 under 35 U.S.C. § 103(a) as being obvious over
MacKinnon (U.S. 4,206,067, issued June 3, 1980) in view of Smith (U.S.
3,679,587, issued July 25, 1972)2; and
3. claims 131-152 under 35 U.S.C. § 103(a) as being obvious over
MacKinnon in view of Smith, further in view of GB 1,370,728 published
October 16, 1974 (“GB ‘728”) or FR 2,120,127 published August 11, 1972
(“FR ‘127”) (English Translation of Record).

ISSUES
The issues presented by this appeal are:
Are claims 131-152 directed to subject matter that represents an
improper recapture of broadened subject matter surrendered during
prosecution of the ‘551 Patent?
Viewing the evidence as a whole, including Appellant’s evidence of
unexpected results, would it have been obvious to have combined the

2 Though Appellants indicate that this ground of rejection includes claims
131-152 (App. Br. 11), the Examiner only includes claim 131 in the
statement of rejection in both the Final Rejection and the Answer. (Final
Rejection mailed November 27, 2007 at 3; Ans. 3.) Accordingly, for the
purposes of this decision, we will treat the rejection of MacKinnon in view
of Smith as applying only to claim 131.
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teachings of MacKinnon in view of Smith, to arrive at the additive
composition recited in claim 131?
Viewing the evidence as a whole, including Appellant’s evidence of
unexpected results, would it have been obvious to have combined the
teachings of MacKinnon in view of Smith, and GB ‘728, to arrive at the
recited additive composition of claims 131-152?

PRINCIPLES OF LAW
“The recapture rule, therefore, prevents a patentee from regaining
through reissue the subject matter that he surrendered in an effort to obtain
allowance of the original claims. Under this rule, claims that are ‘broader
than the original patent claims in a manner directly pertinent to the subject
matter surrendered during prosecution’ are impermissible.” In re Clement,
131 F.3d 1464, 1468 (Fed. Cir. 1997) (citations omitted).
The first step in applying the recapture rule is to
determine whether and in what ‘aspect’ the reissue claims are
broader than the patent claims. . . . The second step is to
determine whether the broader aspects of the reissue claims
relate to surrendered subject matter. To determine whether an
applicant surrendered particular subject matter, we look to the
prosecution history for arguments and changes to the claims
made in an effort to overcome a prior art rejection.
Id., at 1468-69.
“If the scope of the reissue claim is the same as or broader than that of
the canceled claim, then the patentee is clearly attempting to recapture
surrendered subject matter and the reissue claim is, therefore, unallowable.”
Id., at 1469 (internal citations omitted).
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If reissue claims are broader in some aspects and narrower in other
aspects than the canceled claims, then:
(a) if the reissue claim is as broad as or broader in an
aspect germane to a prior art rejection, but narrower in another
aspect completely unrelated to the rejection, the recapture rule
bars the claim; (b) if the reissue claim is narrower in an aspect
germane to prior art rejection, and broader in an aspect
unrelated to the rejection, the recapture rule does not bar the
claim, but other rejections are possible.
Id., at 1470.
“[W]hen a patent claims a structure already known in the prior art that
is altered by mere substitution of one element for another known in the field,
the combination must do more than yield a predictable result.” KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 US 39,
50-51 (1966)).
A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990). Such a showing must be based on evidence, not argument or
speculation. In re Mayne, 104 F.3d 1339, 1343-44 (Fed. Cir. 1997); In re
Schulze, 346 F.2d 600, 602 (CCPA 1965). The evidence must also be
reasonably commensurate in scope with the claimed invention. In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).

FACTUAL FINDINGS
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Claim 1 of the ‘551 Patent recites a fluid composition including:
(a) a fire resistant phosphate ester base stock; (b) an acid
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scavenger; (c) an anti-erosion additive; (d) a viscosity index
improver; and (e) an antioxidant. (The ‘551 Patent, col. 39, l. 44 –
col. 40, l. 8.)
2. The ‘551 Patent discloses: “Enhanced erosion resistance is
provided in the composition of the invention, which preferably
contains a perfluoroalkylsulfonic salt content about twice that of
the prior art composition sold as LD4.” (Col. 9, ll. 23-26.)
3. The ‘551 Patent discloses examples of phosphate ester base
functional fluids and compares functional fluids according to the
present invention to prior art fluids Skydrol® LD-4 and Hyjet®
IVA. (Col. 32, ll. 27-35; Table 11.)
4. The amounts of anti-erosion agent and antioxidant present in the
Examples according to the invention (Ex. 1-13) are larger than the
amount of anti-erosion agent and antioxidant present in the prior
art fluids. (Col. 35-36, Table 11.)
5. Appellant argued during prosecution of the ‘551 Patent that the
isoalkyl groups on the phosphate moiety of the phosphate ester
based stock component recited in the claims was a distinguishing
feature over MacKinnon. (Ans. 8-9, quoting response filed June
28, 1994 in Application 08/099,267.)
6. MacKinnon discloses functional fluids having phosphate esters as
the preferred base fluid, where the alkyl groups in the phosphate
esters may either be straight-chain or branched-chain. (Col. 2, l.
48 – col. 3, l. 19.)
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7. MacKinnon discloses functional fluid containing perhalometallic
or perhalometalloidic acid as an anti-erosion agent. (Col. 2, ll. 14-
17, 31-38.)
8. MacKinnon discloses oxidation inhibitors, which are preferably
hindered phenols. (Col. 6, l. 66 – col. 7, l. 2.)
9. MacKinnon discloses hydrolysis inhibitors including epoxides.
(Col. 7, ll. 3-8, 14-62.)
10. MacKinnon discloses viscosity index improving agents,
particularly methacrylic acid ester polymeric materials with
molecular weights between 5,000 and 300,000. (Col. 7, l. 63– col.
8, l. 3.)
11. Smith discloses the addition of alkali metal salts of perfluoroalkyl
sulfonic acids to the phosphate ester based functional fluid in order
to inhibit erosion. (Col. 1, ll. 12-17; col. 3, ll. 11-20.)
12. Smith discloses a phosphate ester based functional fluid where the
alkyl groups of the phosphate ester may be linear, e.g., ethyl,
propyl, or branched, e.g., isopropyl, 2-ethylhexyl. (Col. 3, ll. 64-
66.)
13. GB ‘728 discloses a phosphate ester based fluid containing
“synergistic combinations of certain hydrogen phosphates and a
certain hindered phenols.” (P. 1, ll. 6-9.)
14. GB ‘728 discloses that the alkyl groups of the phosphate ester base
stock may be linear, e.g., ethyl, propyl, or branched, e.g.,
isopropyl, isoamyl. (P. 1, ll. 24-35.)
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15. The Wolfe Declaration presents fluid life results of functional
fluids, Type IV fluids and Type V fluids, having different additive
packages. (Wolfe Declaration, para. 5.)
16. The Type V fluids contain a larger amount of phenolic antioxidant
than the Type IV fluids, and neither the Type IV fluid nor the Type
V fluid is disclosed as containing the recited viscosity index
improver (c). (Wolfe Declaration, para. 5.)

ANALYSIS
Reissue/Recapture
We are in complete agreement with the Examiner’s analysis that
claims 131-152 represent an attempt to recapture subject matter surrendered
during prosecution of the ‘551 Patent. (Ans. 3, 6-9.) Specifically, as
pointed out by the Examiner, claims 131-152 omit the phosphate ester base
stock limitation recited in, e.g., claim 1 of the ’551 patent, which amounts to
a broadening of the claims of the ‘551 Patent. (Ans. 7.) Thus, contrary to
Appellant’s arguments that the reissue claims are directed to an entirely
different invention not previously prosecuted (App. Br. 13, 19), we agree
with the Examiner that the reissue claims were merely broadened by
omitting the phosphate ester based stock limitation, i.e., the claims omit an
element of the combination recited in the original ‘551 Patent claims.
The Examiner determined that in further limiting the recited acid
scavenger, anti-erosion additive, viscosity index improver, and anti-oxidant
relative to claim 1 of the ‘551 Patent, the additive package recited in claims
131-152 is more narrow than the additive package of claim 1 of the ‘551
Patent. (Ans. 9.) In other words, claim 1 of the ‘551 Patent broadly requires
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all of the components of the additive package recited in claims 131-152,
namely an acid scavenger, an anti-erosion additive, a viscosity index
improver, and an anti-oxidant, but claims 131-152 are more specific with
regard to the recited additive package components. (FF 1.)
However, the Examiner also correctly determined that the aspects of
the reissue claims that were broadened relate to subject matter surrendered
during the course of prosecution. (Ans. 8-9.) Specifically, Appellant argued
during prosecution of the ‘551 Patent that the isoalkyl groups on the
phosphate moiety of the phosphate ester based stock component recited in
the claims was a distinguishing feature over MacKinnon. (FF 5.)
Appellant’s position that the “additive package” recited in the reissue claims
is novel (App. Br. 19), does not affect its surrender of phosphate ester base
stock components other than those that are substantially isoalkyl C4 and C5.
MBO Labs, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316 (Fed. Cir.
2010) (“MBO's arguments distinguishing the prior art based on its safety
flange do not affect its surrender of another subject matter: a patentee's
arguments that emphasize one feature cannot cure arguments that clearly
surrender another.”) Accordingly, since the reissue claims now omit the
phosphate ester base stock component entirely, Appellant is attempting to
improperly recapture subject matter surrendered during prosecution of the
‘551 Patent. Thus, the Examiner correctly determined that the recapture rule
bars the claims. (Ans. 9.)
Moreover, Appellant’s reliance on In re Doyle, 293 F.3d 1355 (Fed.
Cir. 2002) and Medtronic Inc. v. Guidant Corp., 465 F.3d 1360 (Fed. Cir.
2006) as requiring reversal of the Examiner’s rejection is misplaced. In
Doyle, the Board had reversed the Examiner’s rejection of the reissue claims
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based on recapture because the pertinent claims of the patent application
were not canceled to overcome prior art. Doyle, at 1357-58. In contrast, as
discussed above, Appellant relied on the subject matter removed from the
‘551 Patent in the present reissue claims to overcome the prior art during the
original prosecution of the ‘551 Patent. There is no indication that in Doyle,
the method being limited to enantioselectively inserting a carbene between a
carbon and a hydrogen played any part in obtaining allowance of the claims.
Similarly, in Medtronic, as acknowledged by Appellant, the Applicant did
not reduce the scope of the claims intentionally or by argument to overcome
the prior art. (App. Br. 22.) Such is not the case here. Accordingly, we do
not share Appellant’s view that Doyle and Medtronic are controlling in the
instant case and require reversal of the Examiner’s rejection.

35 U.S.C. § 103 Rejections
The Examiner found that MacKinnon discloses the recited
combination of additives with the exception of the anti-erosion additive
being an alkali metal salt of a perfluoroalkyl sulfonic acid. (Ans. 4.) The
Examiner found that Smith discloses a phosphate ester based functional fluid
containing alkali metal salts of perfluoroalkyl sulfonic acids as the anti-
erosion additive. (Ans. 4.) The Examiner concluded that it would have been
obvious to employ the perfluoroalkyl sulfonic acid additives in Smith as the
anti-erosion additive of MacKinnon. (Ans. 4-5.)
For rejection 3, the Examiner relied on GB ‘728 as teaching the
specific hindered phenol anti-oxidants recited in the claims, where it would
have been obvious to employ the specific hindered phenols in MacKinnon,
because MacKinnon discloses hindered phenol anti-oxidants and the
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hindered-phenols of GB ‘728 are known anti-oxidants in phosphate ester
based functional fluids. (Ans. 5.)
Regarding rejection 2, Appellant contends that although Smith issued
years before MacKinnnon, there was no interest to include the erosion
inhibitor of Smith in the additive package claimed. (App. Br. 14.)
Appellant also argues that there were endless choices to be made in
combining ingredients for additive packages in hydraulic fluids. (App. Br.
24.)
Regarding rejection 3, Appellant contends that one of ordinary skill in
the art would not have destroyed the synergistic combination of hindered
phenol with hydrogen phosphate ester disclosed in GB ‘728, by picking the
hindered phenol out of the combination to use in MacKinnon in view of
Smith. (App. Br. 29-30.)
Because Appellant does not present separate arguments with respect
to each of the claims subject to rejection 3, we largely confine our discussion
to claim 131 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). In addition,
Appellant’s arguments regarding rejections 2 and 3 are substantially similar
with respect to the combination of MacKinnon and Smith (App. Br. 29).
Therefore, we discuss rejections 2 and 3 together, and address Appellant’s
arguments as to GB ‘728 applied in rejection 3 as necessary.
Appellant’s arguments are unconvincing. It is well settled that
arguments related to the age of references are insufficient to overcome a
prima facie case of obviousness. In re Wright, 569 F.2d 1124, 1127, (CCPA
1977). In addition, we are not persuaded by Appellant’s argument that there
were endless amounts of choices to be made to arrive at Appellant’s recited
additive combination. MacKinnon discloses the broad combination of
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additives recited in the claims including the anti-erosion agent, as well as the
specific identify of many of the other additives recited in the claims. (FF 7-
10.) Thus, the substitution of the alkali metal salts of perfluoroalkyl sulfonic
acid anti-erosion additives of Smith (FF 11) and the hindered phenol anti-
oxidants of GB ‘728 for the corresponding components disclosed in
MacKinnon amounts to nothing more than mere substitution of one additive
for another to obtain a predictable result. KSR, 550 U.S. at 416
Moreover, because GB ‘728 discloses synergy between the hindered
phenols and the hydrogen phosphate (FF 13), does not mean that the
hindered phenols disclosed therein would not perform an anti-oxidant
function in other phosphate ester based compositions. In addition, the
instant claims contain the transitional phrase “comprising” and thus are open
to the addition of the hydrogen phosphate disclosed in GB ‘728 in addition
to the hindered phenol.
Appellant contends that there are unexpected results in the claimed
additive combination in that it provides similar fluid life characteristics to
prior art n-alkyl phosphate ester fluids as to phosphate ester fluids containing
iso-alkyl moieties. (App. Br. 24.) Specifically, Appellant relies on the
Declaration of Dr. Terry Wolfe of June 24, 1997 (“the Wolfe Declaration”)
as providing evidence of unexpected results. (App. Br. 26, 31-33.)
Appellant contends that the unexpected results are commensurate in scope
with the claims. (App. Br. 33-34.)
However, we agree with the Examiner that the results presented in the
Wolfe Declaration are insufficient to demonstrate unexpected results. (Ans.
11.) In addition, the Wolfe Declaration presents results comparing the fluid
life of Type IV fluids with Type V fluids. (FF 15.) However, neither fluid
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is commensurate with the scope of the claimed combination of additives.
Specifically, neither the Type IV fluid nor the Type V fluid is disclosed as
containing the recited viscosity index improver. (FF 16.)
Moreover, the claims on appeal do not recite any amounts for each
additive in the claims, whereas the Type V fluids contain increased amounts
of anti-oxidant as compared to the Type IV fluids. (FF 16.) Further, in the
examples comparing the fluids in the ‘551 Patent to prior art fluids, the
fluids according to the ‘551 Patent contain anti-erosion agents and anti-
oxidants in amounts greater than the amounts of anti-oxidants in the prior art
fluids. (FF 3, 4.) Thus, it cannot be determined whether the improvement in
fluid life is obtained as a result of the increased amounts of the employed
additives, or the identity of the additives. Therefore, the results are not
commensurate in scope with the claims. As a result, we determine that the
evidence of unexpected results is insufficient to outweigh the Examiner’s
evidence of obviousness.

DECISION
We affirm the Examiner’s rejection of claims 131-152 under
35 U.S.C. § 251. Additionally, we affirm the Examiner’s rejections of
claims 131-152 under 35 U.S.C. § 103(a).

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

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ORDER
AFFIRMED

KMF

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