Ex parte Gunnerman

Board of Patent Appeals and Interferences

Sep 7, 2000

08222477 (B.P.A.I. Sep. 7, 2000)

The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.
Paper No. 26

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RUDOLF W. GUNNERMAN
______________

Appeal No. 1996-3826
Application 08/222,477
_______________

ON BRIEF
_______________

Before WARREN, KRATZ and DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 1 through 35 and refusing to allow claims 36 through 45 as amended subsequent to the final
rejection. Claims 1, 13 and 361 are illustrative of the claims on appeal:
1. A stable, storage fuel combustible in an internal combustion engine which is substantially
nonflammable outside the engine comprising an at least two-phased fluid emulsion of 20 to 80 vol %
water, carbonaceous fuel selected from the group consisting of gasoline, straight run gasoline, kerosene
fuel, diesel fuel, gaseous carbon-containing fuel, carbon synthetic fuels, biomass derived oils and

1 We have reproduced claims 1, 13 and 36 as they appear of record in the amendments of March 13,
1995 (Paper No. 10), August 11, 1995 (Paper No. 13) and November 13, 1995 (Paper No. 16), the
latter entered by the examiner as set forth in the advisory action of November 30, 1995 (Paper No.
17). A copy of these claims is appended to appellant’s brief as Exhibit C.
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mixtures thereof, about 2 to less than 20 vol.% alcohol and about 0.3 to about 1 vol.% nonionic
emulsifier, the resulting emulsion comprising a standard O/W emulsion with water being the external
continuous phase.
13. A method of preparing a stable, storage fuel combustible in an internal combustion engine
which is substantially nonflammable outside the engine comprising an at least two-phased fluid emulsion
of 20 to 80 vol. % water, carbonaceous fuel selected from the group consisting of gasoline, straight run
gasoline, kerosene fuel, diesel fuel, gaseous carbon-containing fuel, carbon bearing synthetic fuel,
biomass derived oils and mixtures thereof, about 2 to less than 20 % alcohol and about 0.3 to about 1
vol.% of an nonionic emulsifier, said emulsion comprising a standard O/W emulsion with water being the
external continuous phase, said method comprising:
a) providing a mixture of carbonaceous fuel and emulsifier,
b) combining 20 to 80 vol.% water with the mixture of step a and 2 to less than 20%
alcohol, and
c) combining the mixtures of steps a and b and thoroughly mixing the resulting mixture
with sufficient agitation to produce a mixture.
36. A method of preparing an aqueous fuel comprising:
(a) mixing a carbonaceous fuel selected from the group consisting of gasoline, naphtha,
kerosene fuels, diesel fuels, gaseous carbon-containing fuels, and mixtures thereof, and emulsifier
together;
(b) providing a mixture of alcohol and water, and
(c) adding the water-and-alcohol mixture to the fuel-and-emulsifier mixture to produce
a mixture of carbonaceous fuel with 20 to 80 vol.% water, and about 2 to less that 20 vol.% alcohol.
The appealed claims as represented by claims 1, 13 and 362 are drawn to a stable, storage fuel
which can be combusted in an internal combustion engine and is substantially nonflammable outside the
engine. The fuel comprises at least a two-phased, standard O/W, that is, oil-in-water, emulsion
containing 20 to 80 vol % water, about 2 to less than 20 vol.% alcohol, a nonionic emulsifier, which can
be present in about 0.3 to about 1 vol.% (claims 1 and 13), and a carbonaceous fuel which is selected
from the group consisting of gasoline, straight run gasoline, kerosene fuel, diesel fuel, gaseous carbon-

2 Appellant in the brief (page 6) sets forth five groupings of claims which correspond to the grounds of
rejection advanced on appeal by the examiner and has separately argued other groupings of claims (id.,
e.g., pages 20-21). Accordingly, we have selected claims 1 through 3, 6, 13, 23, 24, 31 through 33,
36 and 43 as representative of the groupings of claims presented in the brief, the grounds of rejection
and the subject matter on appeal and decide this appeal based on these claims. See 37 CFR §
1.192(c)(7) (1995).
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containing fuel, carbon synthetic fuels, biomass derived oils and mixtures thereof in claims 1 (product)
and 13 (method), and from the group consisting of gasoline, naphtha, kerosene fuels, diesel fuels,
gaseous carbon-containing fuels, and mixtures thereof in claim 36 (method). Claims 28 through 35,
which directly or ultimately dependent on claim 13, and claims 41 through 45, which directly or
ultimately dependent on claim 36, claim a product further characterized by the process by which it is
made. Claims 2, 4 and 11, dependent on claim 1, are drawn to fuels which contain gasoline, diesel fuel
or straight run gasoline, respectively, about 40 to about 60% water, a lubricity enhancer and an
emulsion stabilizer. The lubricity enhancer can comprise at least a polyorganosilioxane compound (e.g.,
claim 3, which depends on claim 2, and claim 23, which ultimately depends on claim 13). The methods
of claims 13 and 36 require at least that the fuel and emulsifier are mixed separately from the other
ingredients. According to appellant, the aqueous fuel will reduce “pollutants produced by internal
combustion engines” (specification, e.g., page 2).
The references relied on by the examiner are:
Morehouse 3,233,986 Feb. 8, 1966
Dubin 5,284,492 Feb. 8, 1994

Kawaai et al. (Kawaai)3 54-234 Jan. 5, 1979
(Japanese Kokai Pat. Publication)
The examiner has advanced the following grounds of rejection on appeal:4
Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over Kawaai;
Claims 2, 4, 6 through 11, 13 through 15, 17 through 22, 24 through 27 and 36 through 40 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Kawaai in view of Dubin;
Claims 3, 5, 12, 16 and 23 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kawaai
in view of Morehouse;

3 We refer in our opinion to the translation of Kawaai prepared for the USPTO by Diplomatic
Language Services, Inc., in May 1996.
4 While the examiner states in the answer (sequential page 2.5) that the grounds of rejection “are set
forth in the prior Office action paper number 11,” which is the Office action mailed June 1, 1995, we
find several grounds of rejection set forth in the final rejection of October 24, 1995 (Paper No. 15).
Thus, the grounds of rejection advanced on appeal are not found in the same “single prior action.” See
Manual of Patent Examining Procedure § 1208 (6th ed., Rev. 1, Sept. 1995; 1200-14).
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Claims 28 through 30, 33 through 35 and 41 through 45 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kawaai in view of Dubin; and
Claims 31 and 32 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kawaai in view of
Dubin, further in view of Morehouse.
We affirm the grounds of rejections based on Kawaai, Kawaai in view of Dubin and, with
respect to claim 32, Kawaai in view of Dubin, further in view of Morehouse. We reverse the ground of
rejection based on Kawaai in view of Morehouse and, with respect to claim 31, Kawaai in view of
Dubin, further in view of Morehouse. Accordingly, the decision of the examiner is affirmed-in-part.
Rather than reiterate the respective positions advanced by the examiner and appellant, we refer
to the examiner’s answer and to appellant’s brief for a complete exposition thereof.
Opinion
We begin our review of the application of the applied prior art to appealed product claims 1
through 3 and 6, method claims 13, 23, 24 and 36 and product-by-process claims 31 through 33 and
43 by determining the invention encompassed by these claims, mindful that the terms thereof must be
given the broadest reasonable interpretation consistent with appellant’s specification as it would be
interpreted by one of ordinary skill in this art. See In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989). The appealed claims encompass the claimed aqueous fuels of claims 1 through 3 and
product-by-process claims 31 through 33 and 43, the latter, of course, drawn to products, see In re
Thorpe, 777 F.2d 695, 697-98, 227 USPQ 964, 965-66 (Fed. Cir. 1985), and methods of making
the same in claims 13, 23, 24 and 36, which we have generally described above (see supra pp. 2-3).5

5 We observe that in claim 13, step “b)” specifies “combining . . . water with the mixture of step a and
. . . alcohol” and step “c)” specifies “combing the mixtures of steps a and b” (emphasis supplied), and
that claim 14, dependent on claim 13, specifies that “a mixture of water and alcohol are added to the
mixture of step a,” which mixing of mixtures is inconsistent. We suggest that any further prosecution of
claim 13, and claims dependent thereon, before the examiner include consideration of whether these
claims, and claims dependent thereon, comply with 35 U.S.C. § 112, second paragraph. However,
we find it is possible to make a reasonable, conditional interpretation of these claims consistent with the
disclosure in appellant’s specification that the fuel and emulsifier are mixed separately and then water
and alcohol are added thereto either separately or in admixture (e.g., page 3, lines 1-11). Such an
interpretation is adequate for the purpose of resolving patentability issues to avoid piecemeal appellate
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We here considered the phrase “combustible in an internal combustion engine” in the preamble of claims
1 (product) and 13 (method) in the context of the claimed invention as a whole, including consideration
thereof in light of the specification, and find that this limitation is not necessary to characterize the
aqueous fuels and methods of preparing the same in order to give meaning to these claims, or any of
dependent product claims 2, 3, 6 and 31 through 33 or dependent method claims 23 and 24, in order
to properly define the invention. Thus, the phrase is not a claim limitation in any of these claims and
therefore constitutes a statement of intended use. We further find that the phrase does not appear in
claim 36 (method) or dependent claim 43 (product). See generally, In re Fritch, 972 F.2d 1260,
1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing Perkin-Elmer Corp. v. Computervision
Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir.), cert. denied, 469 U.S. 857 [225 USPQ
792] (1984)); Corning Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071,
1073 (Fed. Cir. 1987).
We recognize that appellant has specifically defined the term “internal combustion engine” in the
specification (page 3) to “encompass any engine in which carbonaceous fuel is combusted with oxygen
in one or more combustion chambers of the engine.” We find that one of ordinary skill in this art would
consider that the scope of this definition is indeed broad, particularly in view of the scope of the
examples of “such known engines,” which include turbine and diesel engines (id.), and thus would
include engines in which the aqueous fuel is introduced into a combustion chamber by any means,
including fuel injection devices which spray a fuel and air mixture into said chamber (id., e.g., page 10,
lines 12-13). Thus, for example, the definition would encompass the “combustion turbine” engines, in
which the aqueous fuel is injected into the combustion chamber, that use the oil-in-water type aqueous
fuel taught by Dubin (e.g., col. 1, lines 64-66. col. 3, lines 35-37, and col. 4, line 66, to col. 5, line 6 ).
We further find that one of ordinary skill in this art would divine from this “combustion chamber”

review, which, in the interest of administrative and judicial economy, is an appropriate course wherever
reasonably possible. Cf. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962); Ex
parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993); Ex parte Ionescu, 222
USPQ 537, 540 (Bd. App. 1984).
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diversity no further limitation(s) of the claimed aqueous fuels other than those specified in claim 1, and
claims dependent thereon, or of the claimed method for making such fuels other than those specified in
claim 13, and method and product-by-process claims dependent thereon.
Furthermore, the transitional term “comprising” in claims 1, 13 and 36 open these claims to
include at least the ingredients specified in claim 1 and the method steps and conditions specified in
claims 13 and 36, see Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35
USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising - meaning
containing at least - five specific ingredients.”); 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.”). The transitional term “consisting essentially of” in claim 2 would exclude other
ingredients to the extent that such materials are shown in the specification to cause a material change in
the basic and novel characteristics of the invention as claims. See PPG Industries Inc. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354-57, 48 USPQ2d 1351, 1353-56 (Fed. Cir. 1998); In re Herz,
537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976); Ex parte Boukidis, 154 USPQ 444
(Bd. App. 1966). The use of the term “comprising” in the body of claim 2 would, in this instance,
reasonably appear to further indicate that the claimed aqueous fuel can contain any “lubricity enhancer”
and any “additive to improve resistance to phase separation at temperatures above about 170°C,” while
the phrase “group consisting of” limits the claims to the specified carbonaceous fuels. Also, as pointed
out by the examiner (Office action mailed June 1, 1995 (Paper No. 11; page 5)), in claim 24, and thus
in claim 32 dependent thereon, the phrase “up to” is used in specifying the amount of dihydroxyethyl
tallow glycinate that may be used as an “additive to improve resistance to phase separation at
temperatures above about 170°C.” in the method of claim 17 on which it depends, which amount as
stated is customarily interpreted as a specified amount that includes “zero.” See In re Mochel, 470
F.2d 638, 640, 176 USPQ 194, 195 (CCPA 1972).
Turning now to consideration of the grounds of rejection advanced on appeal, the threshold
issue in applying the applied prior art to the appealed claims as we have interpreted them above, is
whether Kawaai, used in all of the grounds of rejection, would have reasonably disclosed oil-in-water
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type aqueous fuels falling within the claimed oil-in-water type aqueous fuels encompassed by appealed
claim 1 to one of ordinary skill in this art (Office action of June 1, 1995 (Paper No. 11, page 2);
answer, sequential page 2.5 to page 5). It is well settled that in considering the effect of a reference, we
must consider the specific teachings thereof and the inferences one of ordinary skill in this art would
reasonably be expected to draw therefrom. In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d
1780, 1782-83 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968). Thus, the definition of a term or the meaning of a phrase in a reference must be construed within
the context of the reference as interpreted by one of ordinary skill in this art. See In re Salem, 553
F.2d 676, 682-83, 193 USPQ 513, 518 (CCPA 1977). In evaluating the relevance of the various
teachings of the reference, we must presume skill on the part of those of ordinary skill in this art. See In
re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
We find that Kawaai would have reasonably disclosed a stable, oil-in-water type emulsified fuel
containing “70-85% by weight of water, and alcohol if needed, as a continuous phase,” “15-30% by
weight of liquid oil as a dispersed phase” and “0.001-10% by weight of a surface active agent for the
formation of an oil-in-water emulsion,” that can be spray-combusted in a furnace (pages 2-3; see also
page 4). Kawaai would also have further reasonably disclosed that a similar “an oil-in-water type
emulsified fuel containing 30-70% by weight of water, irrespective of the kind of oil . . . [which] can be
combusted” was also known (page 3). Thus, one of ordinary skill in this art would have reasonably
inferred from Kawaai that stable, oil-in-water type emulsified fuels that contain the ingredients taught in
this reference would be obtained with less than 70 weight percent of water.6
We find that Kawaai teaches that the surfactant can be nonionic and that the stable, oil-in-water
type emulsified fuel can further contain a stabilizer and a neutralizer (pages 4-5). Kawaai would have

6 Kawaai cites Japanese “Patent Application No. 47-108255” with respect to emulsified fuels
containing 30-70% by weight of water. We observe that U.S. Patent No. 5,156,114 to appellant, cited
in the specification, also discloses aqueous fuels containing about 20 to 80 vol.% of water, a mixture of
an alcohol and carbonaceous fuels, and optionally a surfactant (e.g., cols. 1-4 and 11-13). We suggest
that any further prosecution of the appealed claims before the examiner should include consideration of
applicable patent literature based on said application cited by Kawaai and of the ‘114 patent which
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disclosed to one of ordinary skill in the art that the “liquid oils” can “include various kinds of oily
substances specified in the Fire Protection Law Item No. 4,” examples of which include “gasoline”
(page 5). We find that one of ordinary skill in this art would have reasonably inferred from such
disclosure that other kinds of combustible fuels, such as light fuel oils, including diesel fuel oil, as
disclosed in Dubin (e.g., col. 3, line 45, to col. 4, line 4), can be used in the stable, oil-in-water type
emulsified fuels of Kawaai.
With respect to the disclosure in Kawaai that the oil-in-water type emulsified fuels contain “70-
85% by weight of water, and alcohol if needed, as a continuous phase” (e.g., page 2; emphasis
supplied), we find that, as pointed out by the examiner (Office action of June 1, 1995 (Paper No. 11,
page 2); answer, page 3), while Kawaai does not discloses a specific range of the amounts of water
and, optionally, of alcohol necessary to form a continuous phase in the stable emulsified fuels thereof,
the reference does disclose Kawaai Application Example 2 which exemplifies a method of preparation
of emulsified fuels in which 2 parts of a nonionic surfactant are combined with “an alcohol-containing
aqueous solution (containing 95 parts water and 5 parts of alcohol)” and fuel (page 8). We find from
Fuels No. 1 through 5 in Kawaai Table 3 that, based on the entire emulsified fuel composition, the
water content ranges from 65.196 to 83.824 wt.% and the alcohol content ranges from 3.431 to 4.412
wt.%, for a combined 68.627 to 88.235 wt.%, and the nonionic surfactant content ranges from 1.373
to 1.765 wt.%.7 We note that no alcohol is employed in the emulsified fuel compositions exemplified in
Kawaai Application Example 1 which also contain a different nonionic surfactant.8 In comparing the
viscosity of fuels having corresponding fuel/SW ratios of 30/70 and 20/80 in Examples 1 (Table 1) and
2 (Table 3), we observe that the fuels exemplified in Example 2 are reported to have lower viscosities
that fall within the range taught in the reference (e.g., page 2). We find that one of ordinary skill in this

constitute additional evidence with respect to emulsified fuels containing an amount of water in the
claimed range.
7 The sum of 102 parts of surfactant, water and alcohol comprises the “SW” of the “[fuel]/SW (Wt
ratio).”
8 The fuels in these two examples were combusted in similar pressure jet-type oil burner as shown in
the reference Figure.
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art would have found in this disclosure the reasonable suggestion that alcohol would function in similar
manner with other fuels as disclosed in the reference.
Thus, we agree with the examiner (answer, page 5) that, prima facie, Kawaai would have
reasonably suggested to one of ordinary skill in this art that alcohol can be mixed with water to form the
continuous phase of a stable oil-in-water type emulsion fuel containing, inter alia,
gasoline, as a dispersed phase, as well as nonionic surfactants, stabilizers and neutralizers, in the
amounts reasonably suggested by the reference, with the reasonable expectation that the stable oil-in-
water type emulsified fuels obtained would have the viscosity taught in the reference and can be spray
combusted. See Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1845-46 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 141 USPQ 814 (CCPA 1964).
Accordingly, because the amounts in wt.% of water, alcohol, surfactant and fuel as disclosed,
suggested and exemplified in aqueous fuel compositions by Kawaai would reasonably appear to overlap
with the amounts in vol. % of the same ingredients specified for the aqueous fuel compositions in
appealed claim 1, which compositions can further contain the other ingredients disclosed in the
reference, we find that, prima facie, one of ordinary skill in this art following the teachings of Kawaai
would have reasonably arrived at stable oil-in-water type emulsified fuel compositions that are identical
or substantially identical to the claimed stable oil-in-water type emulsified fuel compositions
encompassed by claim 1. Indeed, we find that, prima facie, the disclosure of Kawaai would have
reasonably suggested to one of ordinary skill in this art that stable water-in-oil type emulsified fuels that
contain slightly greater and lesser amounts of fuel, water, alcohol and/or surfactant than disclosed in the
reference would reasonably be expected to have the same or similar properties to those emulsified fuels
containing the amounts of these ingredients disclosed therein. Thus, the burden has shifted to appellant
to patentably distinguish the claimed fuels over the teachings of Kawaai. See Titanium Metals Corp.
v. Banner, 778 F.2d 775,782-83, 227 USPQ 773, 779 (Fed. Cir. 1985) (“[T]he Russian article
discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni,
balance titanium. The two alloys in the prior art have 0.25% Mo - 0.75% Ni and 0.31% Mo - 0.94%
Ni, respectively. The proportions are so close that prima facie one skilled in the art would have
expected them to have the same properties.”); In re Boesch, 617 F.2d 272, 275-76, 205 USPQ 215,
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218-19 (CCPA 1980) (“Considering also, that the composition requirements of the claims and the cited
references overlap, we agree with the Solicitor that the prior art would have suggested ‘the kind of
experimentation necessary to achieve the claimed composition, including the proportional balancing
described by appellants’ Nv equation. This accords with the rule that discovery of an optimum value of
a result effective variable in a known process is ordinarily within the skill of the art. [Citations
omitted].”); In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977) (“Where,
as here, 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. See In re
Ludtke [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on “inherency”
under 35 USC § 102, on “prima facie obviousness” under 35 USC § 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 citation omitted.]”); In re Wertheim, 541
F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976) (“The solids content and foam density ranges
disclosed by Pfluger 1963 overlap those of appellants, and it appears, the Pfluger process using solids
contents and foam densities overlapping those of appellants will produce instant coffee which is
indistinguishable from appellants’ products. . . . That some of the products covered by appellants’
claims may not be disclosed or suggested by Pfluger 1963 is not relevant to patentability, since the
claims embrace other subject matter completely disclosed by Pfluger 1963.”); In re Malagari, 499
F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974) (“The process taught by Gross is similar to that
claimed by appellant, and the claimed range of carbon in the steel used as a starting material touches
that in the ‘typical preferred range’ of the reference.”).
Accordingly, since a prima facie case of obviousness has been established over Kawaai with
respect to the claimed aqueous fuels encompassed by appealed claim 1, we have again evaluated all of
the evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellant’s arguments. See generally, In re Johnson, 747 F.2d 1456,
1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984).
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We have carefully considered all of appellant’s arguments and the evidence presented in the
specification and the Declaration by Appellant Gunnerman.9 Appellant submits the view of the
disclosure of Kawaai that “of the ‘85-70 weight percent of water and alcohol’, the water or alcohol
may comprise the majority constituent” and concludes that Kawaai does not “disclose an amount of
alcohol in applicant’s range” (brief, page 7). Thus, appellant points to the disclosure at pages 12-13 of
his specification as “specifically [indicating] the important role that alcohol content, in the amount
claimed, plays in contributing to the stability of the aqueous fuel emulsion; and stability is an obviously
important aspect of the aqueous fuel formulation” (id, pages 7-8). Appellant contends that such
disclosure in the specification “establishes the unexpected results obtained by controlling the alcohol
content” in the fuel (id., page 9). Appellant further contends that evidence of patentability is found in the
Gunnerman Declaration which he describes as “summarizing tests conducted to determine the effect of
varying the alcohol content of the fuel composition described and claimed” between the low end and
high end of the range set forth in appealed claim 1, that is, “about 2 to less than 20 vol.% alcohol” (id.;
see also Gunnerman Declaration, pages 1-2). Appellant further submits that the Kawaai fuel
composition is “described therein to be used by burning it in atomized form, probably in a burner” while
the claimed aqueous fuel is “capable of use in an internal combustion engine” (id., page 10). Appellant
further argues that Kawaai discloses “‘85-70 weight percent of water and alcohol’” and that “it is
impossible to tell from the [Kawaai] disclosure not only the amount of alcohol to use, but the ratio of
alcohol to water in the emulsion” and concludes that “the water and alcohol content . . . would be far
outside the range set forth in applicant’s claims as appropriate to achieve a stable fuel” (id., page 12).
We cannot subscribe to appellant’s position. The relevant disclosure of Kawaai is that the
stable oil-in-water type emulsified fuel contains “70-85% by weight of water, and alcohol if needed, as
a continuous phase” (emphasis supplied), which phrase, while different from the
statement “85-70 weight percent of water and alcohol” (emphasis supplied) argued by appellant, does
encompass appellant’s statement to some extent. However, we found above that the exemplification of
the optional use of alcohol as shown in Kawaai Example 2 established that alcohol would be used in

9 The declaration was submitted on August 11, 1995 (Paper No. 14).
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providing a stable emulsified fuel having a viscosity as taught in the reference, and indeed, the amounts
of fuel, water, alcohol and surfactant, stated in wt.%, used in these examples would appear to overlap
the amounts of the same ingredients, stated in vol.%, specified in claim 1 (see supra pp. 8-9). Thus,
contrary to appellant’s contentions, one of ordinary skill in this art would have found in the disclosure of
Kawaai the reasonable suggestion of the role of alcohol and guidance of the amounts thereof to be
employed with respect thereto. We find no evidence of unexpected results either in appellant’s
specification or in the Gunnerman Declaration which would establish the criticality of the range of
alcohol specified in claim 1 vis-à-vis the teachings of Kawaai with respect to this component. We agree
with appellant’s characterization that the evidence in the Declaration is a summary of tests that show the
effect of varying the content of this ingredient and note that the cited portion of the specification is of
similar content. Thus, we find that the evidence of record on which appellant relies is directed to alleged
unexpected properties of the claimed aqueous fuel compositions rather than to an actual difference in
properties between these claimed compositions and the aqueous fuel compositions of Kawaai. See In
re Hoch, 428 F.2d 1341, 1343-44, 166 USPQ 406, 409 (CCPA 1970).
Furthermore, we are not convinced that the aqueous fuel compositions of Kawaai differ from
the aqueous fuel compositions encompassed by appealed claim 1 simply because the reference teaches
that the fuel compositions thereof are spray combusted in the combustion chamber of a burner rather
than in a combustion chamber of an internal combustion engine. As we found above, based on this
record, the phrase “combustible in an internal combustion engine” does not place any limitation(s) on the
aqueous fuel compositions encompassed by appealed claim 1 and is a statement of intended use.
Indeed, as we further found above, the breadth of the definition of the term “internal combustion engine”
set forth in appellant’s specification would include an engine with fuel injection means such that, to use
appellant’s words, the fuel would be injected into the combustion chamber “in atomized form.”
Appellant has not shown that the aqueous fuels of Kawaai could not be used with such a fuel injection
system. To the extent that appellant contends that the cited language of claim 1 is a “method or process
of use” limitation, such a limitation has no place in a composition of matter claim. See In re Wiggins,
397 F.2d 356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA 1968) (“[A]ppellant’s discovery of the
analgesic properties of ‘O2’ and of a composition containing it could properly be claimed only as a
Appeal No. 1996-3826
Application 08/222,477
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method or process of using that compound or composition in accordance with the provisions of
35 U.S.C. 100(b) and 101.”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Kawaai with appellant’s countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claim 1 would have been obvious as a matter of law under 35 U.S.C. § 103.
We consider together the grounds of rejection of claims 2, 6, 13, 24 and 36 and of claims 33
and 43, both based on Kawaai in view of Dubin (see Office action of June 1, 1995 (Paper No. 11,
page 2-5 and 6-7); final rejection of October 24, 1995 (Paper No. 15; pages 6-7); answer, pages 5 to
9 and 9-10). With respect to these claims, the examiner finds that Kawaai does not disclose the use of
a lubricity enhancer (claim 2) or an alkylphenolethoxylate nonionic surfactant (claim 6) in the aqueous
fuels thereof. The examiner further finds that the reference would have suggested the range of “about 40
to about 60% water” (claim 2); that the claimed methods of preparing aqueous fuels (claims 13, 24 and
36) is different than the methods shown in Kawaai; and that the aqueous fuel compositions of Kawaai
are identical or substantially identical to the claimed aqueous fuels prepared by the claimed methods
(claims 33 and 43). The examiner finds that the combined teachings of Kawaai and Dubin would have
reasonably suggested to one of ordinary skill in this art that these differences would be modifications that
would reasonable be expected to result in stable oil-in-water type emulsified fuels and methods of
preparing such fuels, which can be spray combusted.
We agree with the examiner. We have reviewed the teachings of Kawaai above and find here
that the teachings of this reference differ from the claimed aqueous fuel compositions and methods of
preparing the same encompassed by the appealed claims we consider here, as pointed out by the
examiner. We find that Dubin (e.g., col. 3, line 11 to col. 4, line 29, col. 4, line 66, to col. 8, line 54)
discloses stable oil-in-water type emulsified fuels for “combustion turbine” engines which contain from
about 60% to about 90% by weight of water (e.g., col. 4, lines 5-15) and an emulsification system
containing a nonionic surfactant, that can be a nonionic alkylphenolethoxylate (e.g., col. 5, lines 41-43),
in similar manner to the stable oil-in-water type emulsified fuels disclosed in Kawaai. Indeed, we found
above (see supra page 7) that while Kawaai discloses that the aqueous fuels can have “70-85% by
Appeal No. 1996-3826
Application 08/222,477
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weight of water, and alcohol if needed,” along with a nonionic surfactant, this reference would have
reasonably suggested to one of ordinary skill in this art that such fuels can contain a lesser amount of
water, including the range of 30-70%. Dubin also teaches that the aqueous fuels thereof can contain the
same type stabilizers (e.g., col. 6, line 54, to col. 7, line 3) as those of Kawaai in amounts specified in
claim 2, and, as we found above (see supra page 8), the light fuel oils of Dubin (e.g., col. 3, line 45, to
col. 4, line 4) would have reasonably been expected by one of ordinary skill in this art to be used in the
stable, oil-in-water type emulsified fuels of Kawaai.
While Kawaai is silent with respect to a lubricity enhancer, Dubin would have reasonably
suggested to one of ordinary skill in this art that the stable, oil-in-water type emulsified fuel of Kawaai,
which can contain light fuel oil, can reasonably be expected to be used in “combustion turbine” engines
and that a lubricity enhancer added to such aqueous fuels in amounts specified in claim 2 would
reasonably be expected to avoid the mechanical problems known in the art (e.g., col. 3, lines 11-24,
col. 7, lines 15-23, and col. 8, lines 28-35). We recognize that Dubin does not disclose the use of
alcohol in the fuels thereof. However, we find that Kawaai would have reasonably suggested to one of
ordinary skill in this art that alcohol can be used in stable oil-in-water type emulsified fuels having a
viscosity that can be spray combusted and thus one of ordinary skill in this art would have reasonably
expected that such an aqueous fuel can be injected into the combustion chamber of “combustion
turbine” engines in the same manner as the stable oil-in-water type emulsified fuels of Dubin (e.g., col. 1,
lines 64-66. col. 3, lines 35-37, and col. 4, line 66, to col. 5, line 6 ).
Accordingly, we find that, prima facie, the combined teachings of Kawaai and Dubin would
have reasonably suggested to one of ordinary skill in this art that the stable oil-in-water type emulsified
fuels of Kawaai can be modified by the use of a lubricity enhancer and an alkyphenolethoxylate as the
nonionic surfactant in the reasonable expectation of obtaining a fuel that can be spray combusted. Thus,
prima facie, one of ordinary skill in this art following the combined teachings of Kawaai and Dubin
would have reasonably arrived at the claimed aqueous fuels encompassed by claims 2 and 6, in the
absence of any unobvious properties. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991) (“Both the suggestion and the reasonable expectation of success must be founded in
the prior art, not in the applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
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Application 08/222,477
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881 (CCPA 1981)(“The test for obviousness is . . . what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); In re Castner, 518 F.2d 1234, 1238-39,
186 USPQ 213, 217 (CCPA 1975) (“We agree with appellant that not every ingredient is shown in a
single prior art reference. However, when the ingredients are associated in an obvious manner set forth
in the claims, they do not co-act with each other in any new or unexpected way and define nothing
patentable over the prior art. [Citation omitted.]”).
With respect to the claimed methods encompassed by claims 13 and 36, while the same require
at least that the fuel and emulsifier are mixed separately from the other ingredients which are added,
separately or combined, in admixture to form the aqueous fuel, neither claim otherwise specifies any
parameters by which the ingredients are mixed. Kawaai teaches that the oil-in-water type emulsified
fuels are prepared with an emulsifier which can be selected from a number of different mechanical and
ultrasonic devices (page 5). In the Kawaai Examples, a “mixer (3,600 rotation/minute)” is used (page
5) and in Kawaai Example 2, the surfactant was apparently mixed with a solution containing a mixture of
water and alcohol, and fuel, which combined mixture was then added to the mixer (page 8). Dubin
teaches that “[e]mulsion stability is largely related to droplet size” with small droplets being preferred;
can be “enhanced by the use of surfactants and the like, which act as emulsifiers or emulsion stabilizers;”
and can be maintained by the use of an emulsion system, which contains a nonionic surfactant, in which
some of the light fuel oil can be included, that “can in some cases increase emulsion stability of the
emulsion itself” (col. 4, line 45, to col. 5, line 67). Dubin further teaches that
[t]he emulsion . . . can be formed using a suitable mechanical emulsifying apparatus which
would be familiar to the skilled artisan. . . . The emulsion is formed by feeding both the water
and the fuel oil in the desired proportions to the emulsifying apparatus, and the emulsification
system can either be admixed or dispersed into one or both of the components before
emulsification or can be added to the emulsion after it is formed. [Col. 7, lines 4-14.]
Based on this evidence, the examiner finds that it would have been prima facie obvious to one
of ordinary skill in this art to prepare the stable oil-in-water type emulsified fuels of Kawaai by using the
methods of Dubin because one of ordinary skill in this art could have determined the “proper sequence
of adding four ingredients to obtain the most satisfactory mixture” (see Office action of June 1, 1995
(Paper No. 11, pages 4-5); answer, pages 8 to 9). We agree. Each of Kawaai and Dubin teach the
Appeal No. 1996-3826
Application 08/222,477
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preparation of similar stable oil-in-water type emulsified fuels in which the same and similar ingredients
are added in some order, if not already combined, to a device that will form the emulsion, without
limitation on the type of device to be employed. Dubin teaches that an emulsion system, which can
contain some of the fuel, can be admixed or dispersed into the water and/or fuel before emulsification or
added separately during or after emulsification. Thus, we find that, prima facie, one of ordinary skill in
this art following the combined teachings of Kawaai and Dubin would have selected the optimum
method of combing the ingredients with respect to the emulsifying device to be used and the desired
emulsion to be obtained by routine experimentation, and thus would have arrived at the claimed
methods encompassed by claims 13, 24 and 36, in the absence of any unobvious results. See In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). As we found
above (see supra p. 6), claim 24 does not require the presence of any amount of dihydroxyethyl tallow
glycinate.
The product-by-process claims 33 and 43 define an aqueous fuel in terms of the methods of
claims 13 and 36, respectively, which claimed methods, we have found, would have been prima facie
obvious to one of ordinary skill in this art from the combined teachings of Kawaai and Dubin as set forth
above. Thus, we find that one of ordinary skill in this art in preparing the stable water-in-oil type
emulsified fuels of Kawaai following the combined teachings of Kawaai and Dubin would have
reasonably arrived at stable oil-in-water type emulsified fuel compositions that are identical or
substantially identical to the claimed encompassed by 13 and 36. Accordingly, the burden falls upon
appellant to establish by effective argument and/or objective evidence that the claimed invention
patentably distinguishes over the teachings of this combination of references even though the rejection
here is under § 103. See Thorpe, supra; Best, supra; Wertheim, supra; In re Fessmann, 489 F.2d
742, 744, 180 USPQ 324, 325-26 (CCPA 1974) In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972). In similar manner to our discussion above (see supra p. 9), the amounts, in wt.%,
of water, alcohol, surfactant and fuel as disclosed, suggested and exemplified in aqueous fuel
compositions by Kawaai would reasonably appear to overlap with the amounts, in vol. %, of the same
ingredients specified for the aqueous fuel compositions in appealed claim 33, and for water alone in
claim 43, which compositions can further contain the other ingredients disclosed in Kawaai. Thus, we
Appeal No. 1996-3826
Application 08/222,477
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find that, prima facie, one of ordinary skill in this art following the combined teachings of Kawaai and
Dubin would have reasonably arrived at stable oil-in-water type emulsified fuel compositions that are
identical or substantially identical to the claimed encompassed by claims 33 and 43. We further find
here, as we did above, that, prima facie, the disclosure of Kawaai would have reasonably suggested to
one of ordinary skill in this art that stable water-in-oil type emulsified fuels that contain slightly greater
and lesser amounts of fuel, water, alcohol and surfactant than disclosed in the reference would
reasonably be expected to have the same or similar properties to those emulsified fuels containing the
amounts of these ingredients disclosed in the reference.
Accordingly, since a prima facie case of obviousness has been established over the combined
teachings of Kawaai and Dubin with respect to the claimed aqueous fuels and methods of making the
same encompassed by appealed claims 2, 6, 13, 24 and 36 and the claimed aqueous fuels
encompassed by claims 33 and 43, we have again evaluated all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to the weight of appellant’s
arguments. See generally, Johnson, supra; Piasecki, supra.
We have carefully considered all of appellant’s arguments and the evidence presented in the
specification. Appellant submits that because of the several differences between Kawaai and the claims
we consider here, the “obviousness of the combination of references ceases to be apparent when the
secondary reference does not supply all of the deficiencies” (brief, page 14). Appellant contends that
Dubin would have lead one of ordinary skill in the art away from the claimed aqueous fuels and methods
of making the same because the “relative nature of the [external] phase is not important to Dubin” (id.,
page 15). Appellant points out that the aqueous fuel of Dubin is “to be injected through burner nozzles
for combustion . . . [and] discloses a manifold to permit the dual injection of both natural gas and the
emulsion” (original emphasis deleted) and there is no indication from the references that the
“compositions disclosed by [Kawaai] and/or Dubin are capable of combustion in an internal combustion
engine as in appellant’s claims” (id., page 16). Appellant further argues that “both references fail to
disclose the importance of the role of alcohol in maintaining stability of fuel compositions” and thus there
is no reason why one of ordinary skill in the art would have combined the references to modify the
compositions of Kawaai (id., pages 16-19). Appellant observes that Dubin does not disclose a fuel
Appeal No. 1996-3826
Application 08/222,477
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composition that contains an alcohol, lubricity enhancer and stabilizer additive, and points to examples
of lubricity enhancers, emulsifiers and stabilizer additives discloses in the specification (id., page 20).
Appellant also points out that a number of limitations contained by, e.g., claim 6, are not shown by
Kawaai (id., pages 20-21). Appellant further contends that that there is no disclosure in Dubin of a
method of preparing aqueous fuels which would fall within claims 13 and 36 and points out that the
claimed methods are critical as set forth on pages 3 and 16-18 of the specification (id., pages 21-23).
Appellant further submits, with respect to claims 33 and 43, that none of the references disclose
the methods by which the claimed aqueous fuels are made, that such methods provide the fuels with
“qualities not possessed by fuel compositions resulting from mere mixture of the stated components” and
“[t]here is no evidence in the record that a method of preparation different than that claimed by
applicant would produce the same or even a similar result” (brief, pages 24-27).10
We cannot agree with appellant’s position. We fail to find in Dubin any teaching which would
have lead one or ordinary skill in this art away from using water-in-oil type emulsified fuels. Indeed, as
pointed out by the examiner (answer, page 6), and as we found above, Dubin distinguishes between oil-
in-water and water-in-oil fuel emulsions and teaches that either emulsion can be the separate fuel source
used. We also found above that the “combustion turbine” engines set forth in Dubin fall within the broad
definition of “internal combustion engine” in appellant’s specification and that the aqueous fuel
composition of either Dubin or Kawaai can be spray combusted in the same. Thus, one of ordinary skill

10 We note appellant’s contention with respect to the rejection of claims 28 through 30, 33 through 35
and 41 through 45 over Kawaai and Dubin, that while paragraph 6 of the final rejection of October 24,
1995 (Paper No. 15; pages 6-7) stated the rejection, no further explanation was given for the rejection
therein, and, therefore, a complete response to the rejection is prevented (brief, page 24). We observe
that this contention appears for the first time in the brief as no such contention appears in the response
after final rejection of November 13, 1995 (Paper No. 16), in which argument was presented with
respect to this ground of rejection (pages 6-7). Indeed, we note that appellant did not take other action
in response to the examiner’s position in the answer with respect to this matter (pages 9-10). We find
the ground of rejection sufficiently clear from the record in view of the examiner’s statements in the final
rejection and in the Office action of June 1, 1995 (Paper No. 11, pages 6-7) such that our review
thereof does not require remanding the case to the examiner for further consideration or explanation.
See 37 CFR § 1.196(a). We point out that the Board is not the appropriate forum in which to raise this
issue.
Appeal No. 1996-3826
Application 08/222,477
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in the would not have been discouraged from following the teachings of Dubin or led in a divergent
direction than that taken by appellant. See In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131
(Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be discouraged from following the path set out in the reference, or would
be led in a direction divergent from the path that was taken by the applicant. The degree of teaching
away will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant. [Citations omitted.]”).
Furthermore, we find that one of ordinary skill in this art would have reasonably recognized that
the teachings of both Kawaai and Dubin are directed to emulsified aqueous fuels that can be spray
combusted and share such common ingredients as nonionic surfactants and stabilizers, and that Kawaai
would have suggested that an alcohol can be used in the similar aqueous fuels of Dubin. Thus, one of
ordinary skill in this art would have found in the combination of references the suggestion that an
emulsified aqueous fuel containing an alcohol, lubricity enhancers, and stabilizer additives, even if such
additives are not those disclosed in appellant’s specification. Keller, supra. Appellant has not shown
that the appealed claims rejected in the grounds of rejection considered here are limited to the lubricity
enhancers and stabilizers specifically disclosed in the specification or that the stabilizers disclosed in the
references fall outside of the definition of “an additive to improve resistance to phase separation at
temperatures above about 170°F,” that is, at 76.6°C, when used in an emulsified aqueous fuel
composition taught by the references. See Best, supra. We also pointed out above the teachings of the
references which pertain to the claim features discussed by appellant (brief, pages 20-21). We note
here with respect to claim 9, that Dubin (col. 4, lines 30-37) would have disclosed to one of ordinary
skill in this art the reasons why “demineralized water,” which would include “deionized water,” is
desirable, as pointed out by the examiner (answer, page 8).
We cannot agree with appellant that the disclosure in the specification as cited establishes the
criticality of the manner in which the fuel, water, alcohol and surfactant are combined to form a stable,
oil-in-water type emulsified fuel vis-à-vis the teachings of the references. Kawaai discloses the use of a
“mixer (3,600 rotation/minute)” which appears from Dubin to be a conventional device for forming an
Appeal No. 1996-3826
Application 08/222,477
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emulsion, and a process using such a device would fall within claims 13 and 36 which do not specify the
manner in which the ingredients as mixed are combined. We find no disclosure in appellant’s
specification which establishes that the alleged criticality in the mixing of the ingredients would obtain
when such a device is used. In any event, as we pointed out above, Dubin suggests that the emulsifier,
which can contain fuel, can be mixed with either water or fuel prior to combining the ingredients in a
mixer, and appellant has not established that the alleged criticality is indeed an unobvious result in view
of these teachings.
Accordingly, in view of the similarity in the teachings of Kawaai and Dubin and the absence of
evidence in the record establishing the criticality of the processes of claims 13 and 36, we find that
appellant has not established that the aqueous fuels encompassed by claims 33 and 43 have properties
which distinguish the same from the aqueous fuels taught by the references. It is well settled that
arguments of counsel which are not supported by evidence in the record are entitled to little, if any,
weight. See generally In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Kawaai and Dubin with
appellant’s countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 2, 4, 6 through 11, 13 through 15, 17 through 22, 24
through 27 and 36 through 40, and the claimed invention encompassed by appealed claims 28
through 30, 33 through 35 and 41 through 45 would have been obvious as a matter of law under 35
U.S.C. § 103.
We now consider the ground of rejection of claim 32 over Kawaai in view of Dubin, further in
view of Morehouse. We found above (see supra p. 6) that claim 32 does not require the presence of
any amount of dihydroxyethyl tallow glycinate. Thus, we affirm the rejection of claim 32 based on the
combined teachings of Kawaai and Dubin for the reasons we set forth with respect to claims 33 and 43
above, including consideration of appellant’s arguments with respect thereto. We find it unnecessary to
our decision with respect to this issue to discuss Morehouse.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Kawaai in view of Dubin, further in view of Morehouse
Appeal No. 1996-3826
Application 08/222,477
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with appellant’s countervailing evidence of and argument for nonobviousness and conclude that the
claimed invention encompassed by appealed claim 32 would have been obvious as a matter of law
under 35 U.S.C. § 103.
We finally address the ground of rejection of claims 3 and 23 over Kawaai in view of
Morehouse and the ground of rejection of claim 31 over Kawaai in view of Dubin, further in view of
Morehouse. Each of these claims specify an aqueous fuel or method of making an aqueous fuel which
contains a polyorganosilioxane as a lubricity enhancer. The examiner submits that the teaching in
Morehouse to use a polyorganosilioxane to reduce foam in non-lubricating fluids would have suggested
using this polymer to enhance the lubricating properties of the aqueous fuels of Kawaai, with and
without Dubin (see Office action of June 1, 1995 (Paper No. 11, page 6); final rejection of October 24,
1995 (Paper No. 15; page 6); answer, page 9). We have carefully considered the examiner’s position
in light of appellant’s arguments (brief, e.g., page 23) and find that we agree with appellant that one of
ordinary skill in this art would not have combined Morehouse with Kawaai, with and without Dubin.
We further find that Morehouse (col. 1, lines 60-66) teaches that the organic liquids to which the
siloxane-polyoxyalkylene polymers would be added as an antifoaming agent include substantially
anhydrous fuels in which “trace amounts of water that may be present,” such as kerosene and gasoline.
We find that, on this record, such teachings would not have reasonably suggested to one of ordinary
skill in this art to add the polymer to an aqueous fuel. Accordingly, we reverse the ground of rejection
of claims 3, 5, 12, 16 and 23 over Kawaai in view of Morehouse, and the ground of rejection of claim
31 over Kawaai in view of Dubin, further in view of Morehouse.
In summary, we have affirmed the following grounds of rejection under § 103: claim 1 over
Kawaai; claims 2, 4, 6 through 11, 13 through 15, 17 through 22, 24 through 27 and 36 through 40
over Kawaai in view of Dubin; claims 28 through 30, 33 through 35 and 41 through 45 over Kawaai in
view of Dubin; and claims 32 over Kawaai in view of Dubin, further in view of Morehouse. We have
reversed the following grounds of rejection under § 103: claims 3, 5, 12, 16 and 23 over Kawaai in
view of Morehouse; and Claim 31 over Kawaai in view of Dubin, further in view of Morehouse.
The examiner’s decision is affirmed-in-part.

Appeal No. 1996-3826
Application 08/222,477
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No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 1996-3826
Application 08/222,477
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)
)
)
PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

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