Ex Parte Graskow

Board of Patent Appeals and Interferences

Aug 14, 2007

10328115 (B.P.A.I. Aug. 14, 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is not binding precedent of the Board.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 BRIAN R. GRASKOW
____________

Appeal 2007-1395
Application 10/328,115
Technology Center 1700
____________

Decided: August 14, 2007
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
LINDA M. GAUDETTE Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 11-19. We have jurisdiction under 35 U.S.C. § 6.
Appellant's invention relates to a fuel additive containing an alkylene-
oxide-adducted hydrocarbyl amide. According to Appellant, the alkylene-
oxide-adducted hydrocarbyl amide is useful in a method of reducing the
particulate emission in an internal combustion engine, when used as fuel
Appeal 2007-1395
Application 10/328,115

additives in hydrocarbon-based fuels, such as gasoline fuel (Specification 2-
3). Representative independent claim 1, as presented in the Brief, appears
below:
1. A method of reducing the particulate emissions in an internal
combustion engine, said method comprising operating the internal
combustion engine with a fuel composition comprising a major
amount of hydrocarbons boiling in the gasoline or diesel range and
an effective; particulate emissions- reducing amount of an alkylene
oxide-adducted hydrocarbyl amide wherein the hydrocarbyl amide
is a coconut oil fatty acid amide obtained by the reaction of
coconut oil fatty acid or ester and diethanolamine, and further
wherein the coconut oil fatty acid amide is adducted with 3 to 4
moles of propylene oxide.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Boehmke US 4,297,107 Oct. 27, 1981
Lin US 6,312,481 B1 Nov. 6, 2001

Claims 1, 12, 13, and 16-19 stands rejected under 35 U.S.C. § 102 (b)
as anticipated by Boehmke; claim 11 stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Boehmke in view of Lin; and claims 1 and
11-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lin.1
The anticipation rejection
Anticipation under 35 U.S.C. § 102 requires that a prior art reference
describes each and every limitation of a claimed invention with “sufficient

1 The Examiner indicated in the Answer that claim 11 was inadvertently
excluded from this rejection in the final office action (Answer 3). Appellant
did not file a responsive Brief objecting to the inclusion of claim 11 in this
rejection.
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Application 10/328,115

specificity” to establish anticipation. Atofina v. Great Lakes Chem. Corp.,
441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006)).
The issue presented for review with respect to this rejection is: Does
the Boehmke reference have a disclosure that anticipates the claimed subject
matter? The issue turns on whether Boehmke describes a method for
operating an internal combustion engine comprising the employment of a
gasoline composition comprising a monoamide-containing polyether alcohol
compound. We answer this question in the affirmative.
The Examiner finds that Boehmke describes a gasoline fuel
composition comprising an alkylene oxide-adducted hydrocarbyl amide.
The Examiner finds that Boehmke teaches that the amide compound reduces
the amount of harmful substances in the exhaust and the amount of soot
(Answer 4-5). Boehmke discloses that the fuel composition comprises 40-
95% by weight of hydrocarbons or hydrocarbon mixtures (Boehmke, col. 1,
ll. 28-53). Boehmke discloses that harmful substances in the exhaust are
reduced when the fuel composition is used under appropriate conditions
(Boehmke, col. 4, ll. 53-58).
Appellant has not argued that the fuel additive comprising an
alkylene-oxide adducted hydrocarbyl amide described in Boehmke is
different from the fuel additive utilized in the claimed invention. Rather,
Appellant contends that Boehmke’s fuel composition is different from the
claimed invention because Boehmke’s fuel composition includes water (Br.
6). Specifically, Appellant contends “[s]ince no water is added to the fuel in
Appellant’s present invention, the teaching of Boehmke cannot anticipate
Appellant’s present invention because Boehmke teaches that a reduction in
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particulate emissions occurs by using a ‘fuel-water emulsifier’ with the
cooling effect of water in the fuel” (Br. 6).
Appellant's contentions are not persuasive. By virtue of using the
transitional language “comprising” in the claims on appeal, Appellant does
not preclude the presence of water in the claimed fuel additive. In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as
one of the monomers in the reaction is propylene, any other monomer may
be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”). Thus, a person of ordinary skill in the art utilizing
the fuel additive composition described by Boehmke would have been
practicing the claimed invention. Mehl/Biophile Int'l Corp. v. Milgraum,
192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) (“Where, as
here, the result is a necessary consequence of what was deliberately
intended, it is of no import that the article’s authors did not appreciate the
results.”); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a
new benefit of an old process cannot render the process again patentable.”);
accord In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990).
The obviousness rejections.
Claims 1 and 11-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin. We affirm.
The issue presented for review with respect to this rejection is: Does
the Lin reference have a disclosure that would have led a person of ordinary
skill in the art to perform the method for operating an internal combustion
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engine utilizing a gasoline composition comprising a monoamide-containing
polyether alcohol compound? The issue turns on whether Lin describes a
method for operating an internal combustion engine comprising a gasoline
composition comprising a monoamide-containing polyether alcohol
compound. We answer this question in the affirmative.
The Examiner finds that Lin describes a fuel composition
comprising a monoamide-containing polyether alcohol compound of the
formula R1C(=O)-NR2R3 wherein R are each independently selected from H,
C1-C100 hydrocarbyl and polyoxyalkylene alcohol of 2-200 carbon atoms
with the proviso that one of (R4-O)x-H wherein R4 is alkylene of 2-200
carbon atoms and x is from 1-50 (col. 2, ll. 5-67). The Examiner finds that
Lin teaches the monoamide is prepared by reacting 1 mole of an initiator
such as, fatty amides (coconut diethanolamide, stearamide, oleyl
palmitamide, oleic diethanolamide, etc.) with 7-55 moles of one or more
epoxides (see col. 15, lines 1-60). Lin teaches the fuel composition contains
from 1-1000 ppm of the monoamide and may contain less than 10% of a
nitrogen-containing detergent (see col. 17, ll. 42-53; col. 18, ll. 6-21). The
Examiner recognizes that the amides of Lin are not prepared in the same
manner as in the present invention (Answer 6).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires
a determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459,
467(1966). “[A]nalysis [of whether the subject matter of a claim would
have been obvious] need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82
USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361,
80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found
in the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07,
160 USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper to take into account
not only specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom...”).
The analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
skill in the art to combine the elements” in the manner claimed. KSR,
127 S.Ct. at 1731, 82 USPQ2d at 1389.
Appellant contends that Lin does not teach or suggest the claimed
invention. Appellant contends that Lin does not teach or suggest that any
reduction in the particulate emissions in an internal combustion engine
would have been expected utilizing the described fuel additive (Br. 9).
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Appellant contends that there is nothing in the disclosure of Lin that would
have motivated a skilled artisan to select the specific coconut oil fatty acid
amide derived from diethanolamine and use such a compound and an
effective particulate emission-reducing the amount. (Br. 9).
Appellant's contentions are not persuasive. The Specification
discloses a fuel additive can be present in the composition in amounts
ranging from 10 to 10,000 ppm by weight (Specification 11: 23-25). As
stated above, Lin discloses the fuel additive which can be present in amounts
ranging from 1 to 1000 ppm. That is, Lin’s fuel additive is present in an
effective particulate emission-reducing amount. Moreover, as recognized by
the Examiner, Lin suggests utilizing a monoamide-containing polyether
alcohol compound in a fuel composition. The Examiner cites column 15 of
Lin for describing suitable reaction components in forming the monoamine
polyether. Lin discloses that coconut amides are suitable reaction
components. Although Lin does not specifically mention Appellant’s
benefit of reducing particulate emission, such benefit would have naturally
flowed from following the suggestion of Lin. Ex parte Obiaya, 227 USPQ
58, 60 (Bd. Pat. App. & Int. 1985) (holding that the recognition of another
advantage flowing naturally from following the suggestion of the prior art
cannot be the basis for patentability when the difference would otherwise be
obvious )
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Boehmke in view of Lin. We affirm.
Claim 11 specifies the fuel composition utilized in the method of
claim 1 further comprises a nitrogen containing detergent. The Examiner
cited the Lin reference for suggesting the use of nitrogen containing
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detergents in compositions comprising alkylene oxide-adducted hydrocarbyl
amide fuel additives (Answer 5).
Appellant contends that Boehmke describes a fuel composition
comprising water and, as such, Lin would not have suggested to a person of
ordinary skill in the art to utilize a nitrogen containing detergent in the fuel
composition. We do not agree. Lin is evidence that detergent additives for
fuel compositions are known by persons of ordinary skill in the art. The
Boehmke and Lin references describe fuel compositions comprising similar
alkylene oxide-adducted hydrocarbyl amide fuel additives. Thus, a person
of ordinary skill in the art would have reasonably expected that nitrogen
containing detergents would have been suitable for the fuel composition of
Boehmke due to the similarity of components in the fuel compositions of
Boehmke and Lin.
As a final point with respect to the § 103 rejections, we note that
Appellant bases no argument upon objective evidence of nonobviousness,
such as unexpected results.
For the foregoing reasons and those presented in the Answer, we
affirm the rejection.

ORDER
The Examiner's decision rejecting claims 1 and 11-19 is affirmed.

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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)(2006).
AFFIRMED

cam

Steven G. K. Lee
Chevron Texaco Corporation
P. O. Box 6006
San Ramon, CA 94583-0806
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