Ex Parte FANG et alDownload PDFPatent Trial and Appeal BoardSep 26, 201614184188 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/184,188 02/19/2014 64091 7590 09/28/2016 AFTON CHEMICAL CORPORATION LUEDEKA NEELY GROUP P.O. BOX 1871 KNOXVILLE, TN 37901 FIRST NAMED INVENTOR Xinggao FANG 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. AC-2013-20 (69374.US) 1077 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): LNG.PA TENT@gmail.com docketing@luedeka.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XINGGAO FANG and SCOTT D. SCHWAB Appeal2015-005650 Application 14/184, 188 Technology Center 1700 Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and MICHAEL G. McMANUS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1 and 3-17 .1 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). 1 On page 2 of the Answer, the Examiner indicates the correct numbering of the claims, based upon the fact that there was no claim 13, and states that claims 1 and 3-17 are pending in the present appeal, as correctly numbered. Appeal2015-005650 Application 14/184, 188 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: 1. A method of improving injector performance of a fuel injected engine comprising operating the engine on a fuel composition comprising a major amount of fuel and from about 25 to about 300 ppm by weight based on a total weight of the fuel composition of a reaction product derived from (i) a hydrocarbyl substituted dicarboxylic acid or anhydride, wherein the hydrocarbyl substituent has a number average molecular weight ranging from about 600 to about 800 and (ii) a polyamine comprising a compound of the formula H2N-((CHR1-(CH2)n-NH)m-H, wherein R1 is hydrogen, n is 1 and mis 4, wherein a molar ratio of (i) reacted with (ii) ranges from about 1. 3: 1 to about 1. 6: 1, and wherein the reaction product, as made without removing unreacted polyamine from the reaction product, contains no more than 2.5 wt.% unreacted polyamine based on active material in the reaction product, wherein improved injector performance comprises recovering at least 30 % of the power lost during a dirty up phase of a CEC F-98-08 test conducted on the fuel in the absence of the reaction product. The Examiner relies on the following prior art references as evidence of unpatentability: Davies et al. US 2010/0251603 Al (hereafter "Davies") Fang et al. US 8,475,541 B2 (hereafter "Fang") Peretolchin et al. US 2013/0312318 Al (hereafter "Peretolchin") 2 Oct. 7, 2010 July 2, 2013 Nov. 28, 2013 Appeal2015-005650 Application 14/184, 188 THE REJECTIONS 1. Claims 1 and 3-18 (now claims 1 and 3-17, see footnote 1, supra) stand rejected under 35 U.S.C. § 103 as being unpatentable over Fang. 2. Claims 1 7 and 18 (now claims 16 and 1 7, see footnote 1, supra) stand rejected under 35 U.S.C. § 103 as being unpatentable over Peretolchin. 3. Claims 1-18 (now claims 1 and 3-17, see footnote 1, supra) are rejected under 35 U.S.C. § 103 as being unpatentable over Davies. ANALYSIS We select claims 1, 3, 4, and 9 as representative of all the claims on appeal, based upon Appellants' presented arguments. 3 7 C.F .R. § 41.3 7 ( c) (1) (iv) (2014). We adopt the Examiner's findings and position in the record and AFFIRM. We add the following for emphasis. Rejection 1 Appellants submit that none of the applied references suggest or disclose the benefits of using a reaction product having the (1) dicarboxylic reactant molecular weight range that is (2) reacted with a particular polyamine (3) in a narrow molar ratio of reactants (4) that provides a product having less than 2.5 wt.% unreacted polyamine. Appellants submit that they have found a particular combination of reactants and reactant ranges that provides a reaction product that gives unexpectedly good power recovery 3 Appeal2015-005650 Application 14/184, 188 and/ or denmlsibility results, and that all three of the ( 1) dicarboxylic reactant molecular weight, (2) polyamine, and (3) ratio of dicarboxylic reactant to polyamine are critical to obtaining a reaction product having improved injector performance and demulsibility and that contains less than 2.5 wt.% unreacted polyamine, as made. Appeal Br. 9. Appellants submit that the criticality of all three of these criteria is demonstrated by the comparative and inventive examples, as shown in the Table on page 10 of the Appeal Brief, with respect to a product, that has improved fuel injector performance and/or improved demulsibility. Id. With reference to the Table on page 10 of the Appeal Brief, Appellants submit the Table shows that it may be possible to get low unreacted polyamine in the reaction product by using a high ratio of dicarboxylic reactant to polyamine. Appellants state that it may also be possible to remove low molecular weight materials from reactants and reaction products to reduce injector sticking, as described in Fang. Appellants submit, however, that unless the dicarboxylic reactant has a number average molecular weight of from about 600 to about 800, the polyamine is TEP A, and the molar ratio of dicarboxylic reactant to polyamine ranges from about 1.3: 1 to about 1.6: 1, the reaction product, as made, will not provide the claimed improved injector performance in terms of power recovery and/or improved demulsibility provided by the claimed invention. Id. at 10. Appellants submit that the Table shows that slight changes in molecular weights, ratios, or reactants can make profound differences in how the additives perform in a fuel, and that obviousness 4 Appeal2015-005650 Application 14/184, 188 requires more than simply identifying broadly disclosed ranges of reactants and ratios. Id. at 11. However, we are in agreement with the Examiner's reply made on page 8 of the Answer. Therein, the Examiner is unpersuaded by such argument and data because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness is set forth, absent evidence of criticality (as in the present case). The burden rests with Appellants to establish (1) that any alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants discuss Exhibit A (Declaration by Xinggao Fang dated October 3, 2014) on page 11 of the Appeal Brief for the proposition that there is no correlation between additives that are effective to unstick fuel injectors and additives that can improve power recovery in an engine. Appellants state that the present application and Fang are directed to entirely different purposes which require entirely different solutions. We are unpersuaded by such argument for the reasons provided in the Examiner's reply made on pages 8-9 of the Answer. We add that the mere fact that the prior art does not disclose the same purpose for the claimed invention does not defeat the Examiner's rejections. Cf KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). 5 Appeal2015-005650 Application 14/184, 188 With regard to claim 9, Appellants rely in part on the same arguments pertaining to claim 8. Appeal Br. 12. Appellants additionally argue that the Examiner has failed to particularly point out where Fang suggests or discloses a method for power recovery or power restoration, and submit that there is nothing in Fang with regard to methods for restoring power, much less restoring power in the amount of 40% in a diesel engine by using the claimed additive. However, we are in agreement with the Examiner's positon as set forth on pages 3--4 of the Answer. Therein, the Examiner states that a preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67 (CCPA 1976); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). In view of the above, we affirm Rejection 1. Rejection 2 With regard to Peretolchin, Appellants argue that Peretolchin fails to suggest or disclose the critical molecular weight range, reactant molar ratio, and less than 2.5 wt.% unreacted polyamine, and also fails to provide a product that has improved demulsibility performance as demonstrated by Appellants in the attached Declaration set forth in Exhibit B (Declaration by Xinggao Fang dated June 12, 2014). Appeal Br. 13. 6 Appeal2015-005650 Application 14/184, 188 However, with regard to the teachings of Peretolchin, as the Examiner points out on page 10 of the Answer, the claimed additive appears to be one of the preferred embodiments of Peretolchin (see the Examiner's findings made on pages 4-5 of the Answer). We have not been afforded a Reply Brief in the record in response to this finding made by the Examiner. With specific regard to the Declaration set forth in Exhibit B, Appellants argue that three reaction products (referred to as RPI, RP2, and RP3) of Peretolchin were reproduced and tested for demulsibility, and that they demonstrated poor demulsifier performance according to ASTM D- 10904 at pH=7 in an ultra-low sulfur diesel fuel as compared to inventive examples 9 and 10. Appeal Br. 13-14. Appellants argue that they have discovered a narrow range of molecular weight and molar ratio of reactants that provides the unexpected results as set forth in the Declaration of Exhibit B within the broad ranges, but outside the preferred ranges, disclosed in Peretolchin. Id. at 13. However, we agree with the Examiner's position regarding this Declaration of Exhibit B as set forth on pages 10-11 of the Answer. Therein, the Examiner points out that RP 1 is the reaction product of oleic acid (C 18) and diethylene triamine, RP2 is the reaction product of oleic acid (C 18) and tetraethylene pentamine, and RP3 is the reaction product of oleic acid (C 18) and tetraethylene pentamine. The Examiner explains that oleic acid is a straight chain mono-carboxylic acid and not a carboxylic acid anhydride to which the claimed additive is limited. Ans. 10. The Examiner further states that Peretolchin discloses, in one embodiment, that suitable carboxylic acids for reactant (A) include polycarboxylic acids, 7 Appeal2015-005650 Application 14/184, 188 especially dicarboxylic acids, or their anhydrides. Ans. 10 (citing Peretolchin i-f 12. Thus, the Examiner concludes that the demonstrated results are not deemed to be persuasive of patentability over the entire disclosure of Peretolchin. Id. We agree. The Examiner adds that although the claimed ranges for molecular weight and reaction ratios are not exactly the same, they are overlapping in scope with the ranges cited in Peretolchin. Ans. 10. We note that when claimed ranges overlap or lie inside ranges disclosed by the prior art for every component in a claim, a prim a facie case of obviousness is established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). As stated, supra, the burden rests with Appellants to establish (1) that any alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d at 1080. In view of the above, we affirm Rejection 2. Rejection 3 Appellants argue that Davies fails to suggest all three criteria of molecular weight range, the reactant molar ratio, and less than 2.5 wt.% unreacted polyamine (with reference again to the Table set forth on page 10 of the Appeal Brief). Appeal Br. 14. Appellants also argue that Davies teaches away from the claimed invention for the reasons set forth on pages 14--15 of the Appeal Brief. Appellants further argue that Davies fails to 8 Appeal2015-005650 Application 14/184, 188 suggest or disclose the particular narrow molecular weight range of the hydrocarbyl substituent of the dicarboxylic reactant. Appellants additionally argue that Davies fails to suggest the specifically claimed ratio of hydrocarbyl substituted dicarboxylic acid or anhydride to polyamine ranging from about 1. 3: 1 to about 1. 6: 1, in order to provide a reaction product that contains less than 2.5 wt.% polyamine. Appellants further argue that with regard to claim 3, Davies leads away from TEP A (tetraethylene pentamine ). Id. at 16. With regard to claims 4, 12, and 17, Appellants argue that these claims provide for a narrower ratio of hydrocarbyl substituted dicarboxylic acid or anhydride to polyamine ranging from about 1.3: 1 to about 1.6: 1 that is shown in the examples to provide a reaction product that improves injector performance, power recovery and demulsibility in a diesel fuel and direct injected diesel engine. Id. at 16-17. With regard to claim 9, Appellants argue that claim 9 pertains to a method for power recovery or power restoration, and that Davies does not teach such subject matter. 2 Id. at 17-18. In response, the Examiner is unpersuaded by the aforementioned arguments. The Examiner states that the claimed additive appears to be one of the preferred embodiments of the disclosure set forth in Davies, as discussed in the Examiner's findings made on pages 5---6 of the Answer. 2 We are also in agreement with the Examiner's positon as set forth on pages 3--4 of the Answer, wherein the Examiner states that a preamble (as it pertains to claims 8 and 9) is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. 9 Appeal2015-005650 Application 14/184, 188 Ans. 11. The Examiner further states that, although the claimed ranges for molecular weight and reaction ratios are not exactly the same, they are overlapping in scope with the ranges cited in Davies, and as such, a prima facie case of obviousness is established. Id. We agree. See In re Peterson, 315 F.3d at 1329; Geisler, 116 F.3d at 1469-70. We add that, as stated, supra, the burden rests with Appellants to establish ( 1) that any alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the instant case, the evidence relied upon by Appellants is unpersuasive in this regard. In view of the above, we affirm Rejection 3. DECISION Each rejection is affirmed. 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). ORDER AFFIRMED 10 Copy with citationCopy as parenthetical citation