Ex Parte Germaine

Patent Trial and Appeal Board

Mar 27, 2013

12014223 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/014,223 01/15/2008 Gilbert Robert Bernard GERMAINE TS5563 02 (US) 1185
7590 03/28/2013
Shell Oil Company
910 Louisiana
Houston, TX 77002
EXAMINER
STEIN, MICHELLE
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
03/28/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GILBERT ROBERT BERNARD
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Appeal 2012-002576
Application 12/014,223
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeals under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 12 through 14,
all of the claims pending in the above-identified application. We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The subject matter on appeal relates to a base oil. (See, e.g., claim
12.) However, Appellant states that his invention lies in “a process to

1 Appellant identifies the real party in interest as “Shell Oil Company.” (See
Appeal Brief filed June 2, 2011 (“App. Br.”) at 2.)
Appeal 2012-002576
Application 12/014,223

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prepare a lubricating base oil…from a Fischer-Tropsch product,” rather than
the lubricating base oil itself. (See Spec. 1, ll. 1-5.) Details of the appealed
subject matter are recited in representative claim 12 reproduced below from
the “CLAIMS APPENDIX” in the Appeal Brief2:
12. A base oil having a kinematic viscosity at 100 áµ’C of
between 12 cSt and 30 cSt, a viscosity index of greater than 125
and an evaporation loss after one hour at 250 áµ’C of at most 0.5
wt%.

(See App. Br. 5 (Claims App’x).
Appellant seeks review of the Examiner’s rejection of claims 12
through 14 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative
under 35 U.S.C. § 103(a) as unpatentable over, the disclosure of U.S. Patent
5,306,416 issued to Le et al. on April 26, 1994 (“Le”). (See App. Br. 3.)
DISCUSSION
The dispositive question in this appeal is: Has the Examiner shown
that the lubricating base oil taught by Le is identical or substantially
identical to any of those base oils embraced by claim 12 on appeal within the
meaning of 35 U.S.C. § 102(b) or § 103? On this record, we answer this
question in the affirmative.

2 Appellant has not separately argued the claims on appeal. Therefore, for
the purposes of this appeal, we select claim 12 and decide the propriety of
the Examiner’s rejection set forth in the Answer based on claim 12 alone
consistent with 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2012-002576
Application 12/014,223

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As correctly found by the Examiner and not disputed by Appellant, Le
exemplifies a lubricating base oil having a kinematic viscosity at 100oC of
14.19 and a viscosity index of 143.3, which are all well within the kinematic
viscosity and viscosity index of the base oil broadly recited in claim 12 on
appeal. (Compare Ans. 5 with App. Br. 3-4; see also Le, col. 16, ll. 10-35,
Table 5.) Although Le does not further define its exemplified lubricating
base oil functionally in terms of “an evaporation loss after one hour at 250oC
of at most 0.5 wt%,” as recited in claim 12, the Examiner has shown that its
exemplified lubrication base oil is either identical or substantially identical
to at least one of the lubricating base oils encompassed by claim 12 based on
the properties of the claimed and prior art base oils discussed above. 3 As
stated by the predecessor to our reviewing court in In re Best, 562 F.2d
1252, 1255 (CCPA 1977):
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on 'inherency' under 35 U.S.C.

3 This is especially compelling in this case because Appellant has not
disputed the Examiner’s finding that the evaporation loss at 250oC recited in
claim 12 is not independent of the viscosity index of the base oil recited in
claim 12 and taught by Le. (Compare Ans. 6 with App. Br. 3-4.) Moreover,
the Examiner has found that the base oil taught by Le, like Appellant’s base
oil, is useful for the lubricating purpose and is produced by
hydroisomerization of oil products, including that from a Fischer-Tropsch
synthesis. (Ans. 6.)
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Application 12/014,223

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§ 102, on 'prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products.
[(Footnote and citations omitted.) (Emphasis added.)].
Therefore, the burden is properly placed on Appellant to prove that the
lubricating base oil exemplified by Le does not necessarily or inherently
possess the functional characteristic broadly recited in claim 12. See also In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)(By defining a product by
what it does rather than what it is, a patent applicant assumes a risk.)
Nevertheless, Appellant has not proffered any evidence to show that the
lubricating base oil exemplified by Le does not necessarily or inherently
possess the functional characteristic broadly recited in claim 12.
Accordingly, we affirm the Examiner’s decision rejecting claims 12
through 14 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative
under 35 U.S.C. § 103(a) as unpatentable over, the disclosure of Le.
ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claims 12
through 14 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative
under 35 U.S.C. § 103(a) as unpatentable over, the disclosure of Le is
AFFIRMED; and
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Application 12/014,223

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FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).
AFFIRMED

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