Ex Parte Goldman

Board of Patent Appeals and Interferences

Sep 26, 2007

10929891 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GORDON K. GOLDMAN
____________________

Appeal 2007-4234
Application 10/929,8911
Technology Center 1700
____________________

Decided: 26 September 2007
____________________

Before TEDDY S. GRON, CAROL A. SPIEGEL, and MARK NAGUMO,
Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Introduction
Gordon K. Goldman ("Appellant") appeals under 35 U.S.C. § 134
from the final rejections of claims 1-19 under 35 U.S.C. § 112, first

1 Application filed 30 August 2004 and said to be a continuation of
application 09/994,390, filed 26 November 2001, now U.S. Patent 6,783,582
B2, issued 31 August 2004, said to be a continuation-in-part of application
09/317,669, filed 24 May 1999, now U.S. Patent 6,322,621 B1, issued 27
November 2001. The real parties-in-interest are said to be the applicant and
his assignee, Nuritchem, L.L.C. (Appeal Brief filed 3 October 2006 ("Br.")
at 2).
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paragraph, and claims 1-9, 14-15 and 19 under 35 U.S.C. § 102(b). Claim
20, the only remaining claim, was indicated as allowable if rewritten in
independent form.2 We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM-IN-PART and REVERSE-IN-PART.
The subject matter on appeal relates to a method of treating a
crystalline wax, e.g. paraffin, with a chemical composition comprising a
surfactant to reduce its surface tension in order to disperse it in a diluent.
Claims 1 and 4 are exemplary and read as follows:
1. A method of liquefying and dispersing
crystalline wax in a petrochemical mixture
comprising the steps of:
(a) chemically treating the crystalline wax
in the petrochemical product to reduce the surface
tension of the crystalline wax, converting it to an
amorphous form of wax; and
(b) dispersing the amorphous wax in a
diluent.
4. The method of Claim 1, wherein the
crystalline wax is contained in slop oil, and there is
further included in step "b" the step of:
using crude oil as the diluent.
(Br. at 6).

2 The Office Action mailed 3 April 2006 ("Final Rejection") at 4. In the
event of further prosecution, the Examiner should consider whether the
dependency of claim 20 on claim 4 provides proper antecedent basis for "the
surface active agent" recited in claim 20.
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The Examiner has rejected claims 1-19 under 35 U.S.C. § 112, first
paragraph (not enabled for the full scope of the claimed invention), and
claims 1-9, 14-15 and 19 under 35 U.S.C. § 102(b) (Answer3 at 2-3).
The Examiner relies upon the following prior art4 of record:
Ohkura5 JP 09-296162A 18 November 1997
According to the Examiner, claims 1-9, 14-15 and 19 are anticipated by
Okhura (Answer at 3).
II. Findings of Fact (FF)
The following findings of fact are supported by a preponderance of
the evidence of record.
A. Appellant's Specification
[1] According to the specification, a large amount of heavy material
separates and precipitates from crude oil when it is pumped from the
ground and transported or stored (Specification at 5:8-10).
[2] The majority of the heavy material precipitate, in some cases up to
90%, is said to be high molecular weight paraffin waxes
(Specification at 5:10-12).
[3] The amount of wax present in crude oil is said to be an indicator of its
origin, e.g., Venezuela or Mexico (Specification at 5:13-14).
[4] Crude oil is said to contain a mixture of wax, oil, sand and water,
referred to as "slop oil," typically in the range of 2 to 5 percent, which

3 Examiner's Answer mailed 20 March 2007 ("Answer").
4 No references to et al. are made in this opinion.
5 This decision cites the English language translation of Ohkura made for the
U.S. Patent and Trademark Office in January 2007 by Schreiber
Translations, Inc.
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varies with the type of crude and conditions under which it has been
transported (Specification at 5:15 through 6:2).
[5] Numerous pumping lines are said to be clogged daily or monthly due
to wax precipitating out of the crude oil (Specification at 6:11-12).
[6] Additionally, one of the main sites of corrosion in pipelines and
storage tanks is said to be areas of paraffin wax buildup
(Specification at 7:4-5).
[7] The specification describes chemical dispersants which preferably act
as (i) wax liquifiers, converting slop oil waxes from crystalline to
amorphous forms which are readily dispersible in crude oil; (ii)
demulsifiers, separating out water, sand or grit present in the slop oil;
(iii) degreasers; and, (iv) pour point depressants (Specification at
10:2-15).
[8] The wax is said to be dispersed as hydrocarbon into the crude oil
(Specification at 10:15-16).
[9] Keeping the wax dispersed in the crude oil is said to lower
maintenance costs and downtimes due to pipeline clogging and
corrosion and to increase the throughput and flow rate of crude oil
through the pipelines (Specification at 11:4-11).
[10] A preferred chemical dispersant is a homogenous mixture of (a)
about 25% to about 99.5% by weight surface active agent, (b) about
15% to about 35% by weight butyl cellosolve (i.e., 2-butoxy-ethanol),
and (c) about 5% to about 15% by weight of (i) pine oil and (ii) a
catalyst made of saturated higher fatty acids, an alkylphenol and an
oil-water soluble copolymer of partially sulfonated, maleic anhydride
and polystyrene with a molecular weight ranging from about 2,000 to
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about 2,000,000, wherein the catalyst mixture is typically present at a
concentration of about 0.5% to 5% by weight (Specification at 22:3-
13).
[11] Preferred surface active agents are said to be nonionic
polyethyoxylated compounds having an HLB from about 10 to about
11.5 (Specification at 22-27).
[12] In particular, according to the specification, the HLB number
of the surfactant determines the type of emulsion
produced as well as the stability of the emulsion.
A water-in-oil (W/O) type of emulsion requires
emulsifiers of low H.L.B. number, e.g., about four
(4) [100% water insoluble-non-dispersible in
water)], while an oil-in-water (O/W) type requires
emulsifiers with higher H.L.B. numbers, e.g., nine
to sixteen (9-16). Surfactants with H.L.B.
numbers near thirteen (13) are detergents, and
those of fifteen to sixteen (15-16) are stabilizers.
The surface active agents in the currently
preferred, exemplary product preferably have a
H.L.B. number ranging from about ten to about
eleven and a half (10-11.5) and are considered to
be good re-wetting agents (low contact angle) and
are good emulsifying and dispersing agents for oils
and solids. [Specification at 23:6-15.]
[13] A fluorocarbon alcohol may be added to the surfactant to increase its
effectiveness, i.e., to further lower the surface tension of the
composition of matter (Specification at 23:16 through 24:7).
[14] The butyl cellulosolve and pine oil are said to act as degreasers
(Specification at 24:9-10).
[15] Plasticizers, e.g., phosphate esters, phthalate esters, adipate esters
and/or benzoate esters, optionally, added to the chemical dispersant,
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are said to increase the rate of conversion of crystalline wax to
amorphous wax (Specification at 40:12-16).
[16] Optionally adding hydrotrope-demulsifiers and chelating agents to
the chemical dispersant is said to increase the solubility of the wax in
a hydrocarbon (Specification at 42:3-5).
[17] Useful hydrotrope-demulsifiers include sodium xylene sulfonate,
sodium dodecyl sulfonate, sodium cumene sulfonate, ammonium
cumene sulfonate, sodium naphthalene sulfonate and sodium
napthenic acid sulfonate (Specification at 42:7-13).
[18] Useful chelating agents include ethylenediamine tetraacetic acid
(EDTA) and its sodium salt, nitrilotriacetic acid (NTA), and
polymeric chelating agents derived from copolymers of acrylic and
maleic acids (Specification at 42:14 through 32:2).`
[19] Useful diluents for dispersing amorphous waxes are said to include
diesel, light cycle oil, vacuum gas oil, middle distillate, kerosene,
crude oil (heavy or light), crude oil tank bottoms, asphalt crude and
fuel oil (Specification at 21:7-9).
[20] However, the dispersing medium may also include liquid
hydrocarbon products derived from natural gas or its byproducts,
organic solvents, and water (Specification at 15:6-12; 16:1-4).
Other findings of fact are cited as necessary below.
III. Scope of Enablement
Section 112 requires that the specification enable those skilled in the
art to make and use the full scope of the claimed invention without undue
experimentation. "The scope of enablement, in turn, is that which is
disclosed in the specification plus the scope of what would be known to one
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of ordinary skill in the art without undue experimentation." Nat'l Recovery
Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196, 49
USPQ2d 1671, 1676 (Fed. Cir. 1999). When rejecting a claim for lack of
enablement under section 112, the Examiner bears an initial burden of
setting forth a reasonable explanation why he believes that the scope of the
claims would not have been adequately enabled by the supporting
specification. This explanation includes providing sufficient reasons for
doubting assertions in the specification. If the Examiner satisfies this
burden, the burden then shifts to the applicant to provide suitable proofs
establishing that the specification is indeed enabling. In re Marzocchi, 439
F.2d 220, 223, 169 USPQ 367, 369-70 (CCPA 1971).
Claims 1-19 stand rejected under § 112, first paragraph, as not
enabled throughout their scope.
[21] The Examiner found that Appellant's specification described a
specific chemical dispersant on page 22 (Answer at 3).
[22] The Examiner concluded that "[m]erely reciting the desired result
(the properties obtained) does not enable claims which are not limited
to the specific compositions shown to achieve them" (Answer at 3).
This superficial analysis by the Examiner is insufficient to meet his
initial burden of providing a reasonable explanation as to why the disclosure
in the specification does not enable the full scope of claims 1-19.
For example, claim 1 recites a method of treating a crystalline wax in
a petrochemical mixture to reduce its surface tension, thereby converting it
to an amorphous form which is dispersed in a diluent. There are no
limitations recited in claim 1 as to where the method is performed or at what
temperature or how long the wax must minimally remain dispersed in the
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diluent or type of diluent. Thus, it appears to us that claim 1 simply requires
a surfactant which, for example, liquifies the wax, i.e., which reduces its
surface tension sufficient to make it readily dispersible in a diluent, to satisfy
step (a) of chemically treating the crystalline wax. The specification
describes surfactants which are "good emulsifying and dispersing agents for
oils and solids" (FF 12) as well as fluorocarbon alcohols said to enhance the
action of a surfactant by further lowering the surface tension of the oil or
solid (FF 13). The specification further describes plasticizers said to
enhance the rate of conversion of crystalline wax to amorphous wax (FF 15).
The specification still further describes hydrotrope-demulsifiers and
chelating agents said to increase the solubility of the wax in a hydrocarbon
(FF 16) (see e.g., claim 4 wherein the diluent is a hydrocarbon). Nothing
more than objective enablement is required. It is irrelevant whether this
teaching is provided through broad terminology or illustrative examples.
Marzocchi, 439 F.2d at 223, 169 USPQ at 369.
Here, the Examiner has not explained why one skilled in the art,
reading the disclosure of Appellant's specification plus the scope of what
would have been known to the skilled artisan, would have required undue
experimentation to make and use the methods of claims 1-19. The
Examiner's finding that the specification only described one specific
chemical dispersant (FF 21) is not a sufficient reason for doubting the scope
of enablement provided by the specification. It is well established that even
a broad claim can be enabled by disclosure of a single embodiment.
Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ2d 1737
(Fed. Cir. 1987). Since the Examiner has not met his initial burden of
setting forth a reasonable explanation as to why he believes that the scope of
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the claim would not have adequately enabled by the description of the
invention provided in the specification of the application, we REVERSE the
rejection of claims 1-19 under § 112, first paragraph.
IV. Anticipation
Claims 1-9, 14-15 and 19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ohkura. Appellant has not argued the separate patentability
of claims 1-3, 5-9, 14-15 and 19. Therefore, we decided this issue on the
basis of claims 1 and 4. 37 C.F.R. § 41.37(c)(1)(vii).
A. Additional Findings of Fact
[23] Ohkura discloses a chemical dispersant for treating highly viscous oil
which comprises (a) a polyoxyethylene sorbit fatty acid ester having
an HLB of 10-13, (b) a nonionic surfactant having an HLB of 2-6 and
(c) a hydrocarbon solvent (Ohkura at 7-8, ¶ 8, and 18, ¶ 39).
[24] Polyoxyethylene sorbit fatty acid esters having HLBs of 10-13 are
said to show a high emulsification performance against highly
viscous oil (Ohkura at 10, ¶ 12).
[25] The HLB 2-6 nonionic surfactant is said to improve "soaking
characteristics into highly viscous oil" (Okhura at 16, ¶ 33).
[26] The hydrocarbon solvent may be a paraffin type solvent, a
naphthalene type solvent, spindle oil, n-decane, kerosene or light oil
(Ohkura at 8-9, ¶ 8).
[27] The hydrocarbon solvent is said to be effective in reducing the
viscosity of the highly viscous oil (Okhura at 16-17, ¶ 35).
[28] According to Ohkura, the dispersant can be used for dispersion
treatment of oil, without restriction as to the type of oil (Ohkura at 18,
¶ 39).
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[29] Preferably, the dispersant is used to treat crude oil or fuel oil that has
run off into the ocean, e.g., as a result of an oil spill from a tanker
(Ohkura at 5, ¶ 2; 7, ¶ 7; and, 18, ¶ 39).
[30] According to the Examiner, the translation of Ohkura used "the
awkward construction 'run off oil' in substitution for authoritative
'slop oil'" as used by the Japanese Patent Office (Answer at 4).
[31] Indeed, the abstract of Ohkura, copyrighted by the Japanese Patent
Office in 1997 and made of record in the Office Action mailed 18
October 2005, reads, in relevant part:
PROBLEM TO BE SOLVED: To obtain the
subject low-toxic treating agent which contains a
specific polyoxyethylenesorbitol fatty acid ester, a
nonionic surfactant and a solvent, can effectively
disperse the slop oil even when it is highly viscous
and is readily producible in a large scale and
suitable for dispersion of the oil slopped or spilled
out on the sea. [Emphasis added.]
[32] The Examiner found that Ohkura
teaches the same method steps, treating the
crystalline wax and dispersing it in a diluent,
performed using components meeting every
compositional requirement of the instant claims.
The explicit teaching that the prior art effectively
disperses slop oil, a mixture containing crystalline
wax, as exemplified in claim 4, implicitly teaches
lowering of the surface tension (to permit
dispersion at sea) and the conversion to the
amorphous form necessary for crystalline wax to
be dispersed. . . . [Answer at 4.]
[33] According to the Examiner, "[t]he instant specification clearly
indicates the art-recognized composition of slop oil as including
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crystalline paraffin wax. See, page 4, lines 11-16; page 5, lines 8-13;
page 5, line 15 through page 6, line 7 and; page 8, lines 1-6" (Answer
at 5).
[34] Appellant argues that dealing with slop oil does not mean that Ohkura
is dealing with crystalline paraffin wax because not all slop oil
contains crystalline paraffin wax (Br. at 4).
[35] Moreover, Appellant contends that "slop oil" should be narrowly
construed as "residual waste oil remaining from emulsion breaker-
dehydration treatment of heavy and light crude oils [sic, in] a
production or pipeline terminals [sic]" (Reply Br.6 at 2).
[36] According to Appellant, Ohkura and the present claims were invented
for two different, mutually exclusive purposes (Reply Br. at 3).
[37] Appellant further argues that
[w]hile the agent disclosed in the present patent
application also works as a degreaser and can
disperse slop oil in water like any other nonionic
surfactant (such as the one used in the Japanese
patent document), the method disclosed in the
Japanese patent document will not convert
crystalline paraffin wax to amorphous wax, and
thus the Japanese patent document does not
anticipate these claims (Br. at 4).
[38] Appellant still further argues that a plasticizer is required to practice
the invention of claim 1 in the conditions mentioned in Ohkura
because plasticizers are needed to convert crystalline wax to an
amorphous wax in the absence of heat (Reply Br. at 1-2).

6 Reply Brief filed 13 May 2007 ("Reply Br.").
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[39] Appellant contends that the translation of Ohkura makes clear that,
contrary to the Examiner's position, Ohkura is not concerned with
slop oil (Reply Br. at 3).
[40] Finally, Appellant also argues that just because crystalline wax is
present in slop oil (as required by claim 4), it does not follow that
dispersing slop oil in water will convert crystalline wax to amorphous
wax as recited in claim 1 (Br. at 4; Reply Br. at 2).
B. Discussion
Anticipation requires disclosure of each and every claim limitation in
a single prior art reference, either explicitly or inherently. MEHL/Biophile
Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed.
Cir. 1999). Anticipation by a prior art reference does not require either the
inventive concept of the claimed subject matter or recognition of inherent
properties that may be possessed by the reference. Verdegaal Brothers Inc.
v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054
(Fed. Cir. 1987). When a claimed method reasonably appears to be the same
or substantially the same as a method disclosed in the prior art, it is
reasonable to shift the burden to applicant to show that they are, in fact,
patentably different methods. In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657-58 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
432-33 (CCPA 1977).
The method of claim 1 comprises chemically treating the crystalline
wax in a petrochemical mixture to reduce the surface tension of the
crystalline wax, converting it to an amorphous wax, and dispersing the
amorphous wax in a diluent. There are no limitations recited in claim 1 as to
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where the method is performed or at what temperature or how long the wax
must minimally remain dispersed in the diluent or type of diluent. The
Examiner found that Ohkura teaches the same method steps using
substantially the same reagents (FF 32).
As discussed in the "Background" section of Appellant's specification,
it is known in the art that a large amount of heavy material separates and
precipitates from crude oil when it is being transported (FF 1), the majority
of which comprises high molecular weight paraffin waxes (FF 2), and that
the amount of wax and "slop oil" varies with the source and type of crude
oil, as well as the conditions under which it is being transported (FFs 3-4).
The specification expressly defines "slop oil" as a mixture of wax, oil, sand
and water (FF 4). Ohkura teaches treating a petrochemical mixture, i.e., any
type of highly viscous oil, e.g., crude oil that has spilled into an ocean as
result of an oil tanker accident, with a specific chemical dispersant (FFs 23,
28 and 29). Ohkura's dispersant comprises a surface active agent having the
same or substantially the same HLB as used by Appellant in his dispersant
(compare FFs 10-12 to FFs 23-24). According to Appellant's specification,
the diluent into which the amorphous wax is dispersed includes diesel,
kerosene, crude oil tank bottoms and water (FFs 19-20). Ohkura's dispersant
further comprises a hydrocarbon solvent, e.g., a paraffin type solvent or
kerosene (FF 26). Thus, we find that claim 1 is prima facie anticipated by
Ohkura. Appellant has not introduced evidence to the record sufficient to
establish the contrary.
First, we decline to read "slop oil" as narrowly argued by Appellant
(see FF 35). The proffered definition is inconsistent with the definition of
the term set forth in the specification, which expressly defines slop oil as a
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component of crude oils (see FF 4). Moreover, Appellant failed to submit
any evidence establishing that the narrow definition proffered is the art
accepted definition of the term; nor has Appellant explained the discrepancy
between the proffered definition and his specification. Attorney argument
and conclusory statements, absent evidence, are entitled to little, if any,
weight. Velander v. Garner, 348 F.3d 1359, 1371, 68 USPQ2d 1769, 1778
(Fed. Cir. 2003); Meitzner v. Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22
(CCPA 1977). For similar reasons, Appellant's argument that not all slop
oil contains crystalline paraffin wax is also unpersuasive. Both Appellant's
and Ohkura's specifications relate to dispersing heavy oils, including crude
oils, without qualification.
Second, Appellant argues that Ohkura's dispersant will not convert
crystalline paraffin wax to amorphous wax . In particular, Appellant argues
that a plasticizer would be needed to convert crystalline wax to amorphous
wax in the absence of heat. However, Appellant has not pointed to evidence
of record to support these arguments. For example, the absence of heat may
only mean that dispersion by Ohkura's dispersant takes place more slowly.
Third, whether or not the method of Ohkura is intended for the same
circumstances Appellant disclosed, is irrelevant in an anticipation analysis as
long as the claim limitations are met. A method that reduces the surface
tension of a crystalline wax, converting it to an amorphous form, and then
disperses the wax in a diluent is within the scope of claim 1 whether it cleans
up heavy sludge material fouling beaches and wildlife after a crude oil spill
or cleans up the heavy material clogging crude oil pumping lines and storage
tanks.
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Fourth, Appellant's contention that the translation of Ohkura makes it
clear that Ohkura is not concerned with "slop oil" as defined by Appellant is
wrong. The totality of the evidence weighs in favor of the Examiner's
position. Specifically, the abstract of Ohkura by the Japanese Patent Office
clearly recites "slop oil" and Appellant has not established that the term
translated as "run off oil" is materially different from "slop oil," e.g., an
affidavit from a qualified translator.
Based on the foregoing, we affirm the rejection of claim 1 under 35
U.S.C. § 102(b) as anticipated by Ohkura. Since Appellant has not offered
independent arguments against the rejection of claims 2-3, 5-9, 14-15 and 19
under § 102(b) as anticipated by Ohkura, we affirm that rejection without
further discussion. 37 C.F.R. § 41.37(c)(1)(vii).
As to claim 4, Appellant argues that just because crystalline wax is
present in slop oil, it does not follow that dispersing slop oil in water will
convert crystalline wax to amorphous wax. Appellant argues, in relevant
part, that the diluent for the dispersed wax in Ohkura is water. Indeed, the
Examiner appears to agree with Appellants that Ohkura "teaches lowering of
the surface tension (to permit dispersion at sea)" (Answer at 4, emphasis
added). Claim 4, however, requires the diluent for the dispersed wax to be
crude oil. The Examiner has not made any specific finding that Ohkura
discloses, expressly or inherently, crude oil as the diluent for the dispersed
wax as required by claim 4. On this record, we decline to undertake such
fact finding in the first instance. Therefore, we REVERSE the rejection of
claim 4 under § 102(b) as anticipated by Ohkura.
V. Conclusion
In view of the record and for the reasons given, it is
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ORDERED that the rejection of claims 1-19 under 35 U.S.C. § 112,
first paragraph, is REVERSED;
FURTHER ORDERED that the rejection of claims 1-3, 5-9, 14-15
and 19 under 35 U.S.C. § 102(b) as anticipated by Ohkura is AFFIRMED;
FURTHER ORDERED that the rejection of claim 4 under 35 U.S.C.
§ 102(b) as anticipated by Ohkura is REVERSED; and,
FURTHER ORDERED that the time for taking further action is not
extendable under the provisions of 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; REVERSED-IN-PART

TEDDY S. GRON, Administrative Patent Judge, concurs in the result
only.

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