12675149 (P.T.A.B. May. 25, 2016)

Ex Parte Hayes et al

Patent Trial and Appeal BoardMay 25, 2016

12675149 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/675,149 11/12/2010 Howard Richard Hayes 23632 7590 05/27/2016 SHELL OIL COMPANY PO BOX 2463 HOUSTON, TX 77252-2463 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. TS7737(US) 2330 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 05/27/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): USPatents@Shell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOW ARD RICHARD HA YES, DOMINIQUE JEANPAUL PITHOUD, DAVID JOHN WEDLOCK and Y ANYUN WU Appeal2014-009217 Application 12/675,149 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-3 and 5-10. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants appealed the rejection of claims 1-3 and 5-10. App. Br. 2. The Final Action and Answer list claims 1-3 and 9-12 as rejected by the Examiner. Final Act. 2; Ans. 2. We consider this harmless error given that the Examiner entered an amendment submitted on October 31, 2013 canceling claims 11 and 12, per the Advisory Action dated November 13, 2013. Accordingly, only claims 1-3 and 5-10 are before us for review on appeal. Appeal2014-009217 Application 12/675,149 Appellants' invention is directed to a process to increase the efficiency of a regenerable diesel particulate trap in a diesel engine. App. Br. 3. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A process to increase the efficiency of a regenerable diesel particulate trap in a diesel engine, the process compnsmg: lubricating the diesel engine with a lubricant composition that comprises a Fischer-Tropsch derived base oil component having a paraffin content of greater than 80 wt% paraffins, a saturates content of greater than 9 8 wt%, and comprising a series of iso-paraffins having n, n+l, n+2, n+ 3 and n+4 carbon atoms, wherein n is between 15 and 40; and operating the diesel engine using a fuel that comprises a Fischer-Tropsch derived fuel component. App. Br. 8 (Claims Appendix). Appellants request review of the Examiner's rejection of claims 1-3 and 5-10 under 35 U.S.C. Â§ 103(a) as unpatentable over Johnson (US 7,241,375 B2, issued July 10, 2007), Colboume (US 2007/0151526 Al, published July 5, 2007), Bardasz (US 7,543,445 B2, issued June 9, 2009), Miller '287 (US 7 ,951,287 B2, issued May 31, 2011) and Miller '657 (US 7,374,657 B2, issued May 20, 2008).2 App. Br. 3; Final Act. 2. 2 We find the references to Miller '287 and Miller '657 to be duplicative. Accordingly, we will limit our discussion of the rejection to the Miller '287 reference, which was specifically relied upon by the Examiner. Final Act. 4. 2 Appeal2014-009217 Application 12/675,149 We AFFIRM. OPINION 3 Prior Art Re} ection After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's prior art rejection of claims 1-3 and 5-10 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and add the following for emphasis. Appellants argue the Examiner has simply alleged that each claim element was individually known in the prior art without providing a reason to support the conclusion that a person skilled in the art would have been motivated to combine the references. App. Br. 5. According to Appellants, the Examiner failed to cite to any reference, information or evidence to suggest that one of ordinary skill in the art would recognize the combined use of a lubricant composition comprising a Fischer-Tropsch derived base oil component having the claimed paraffin content and a series of iso- paraffins and of a fuel comprising a Fischer-Tropsch derived fuel component in a diesel engine would have any particular effect whatsoever, much less have an impact on the regeneration frequency of a particulate trap in a diesel engine. Id. at 6. The Examiner found Bardasz discloses regenerating or improving the regeneration of a particulate filter during the operation of a diesel engine by using a synthetic lubricant composition comprising hydrocarbons prepared 3 Appellants do not argue one claim separate from the others. See Appeal Brief, generally. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal and claims 2, 3 and 5-10 will stand or fall with independent claim 1. 3 Appeal2014-009217 Application 12/675,149 by the Fischer-Tropsch process. Final Act. 3--4; Bardasz col. 1, 11. 9-13; col. 2, 11. 27-39; col. 3, 11. 49-53. The Examiner also found Johnson teaches a Fischer-Tropsch derived base lubricant oil component having a paraffin content and a series of iso-paraffins as required by claim 1 as a lubricating oil. Final Act. 2-3; Johnson col. 1, 11. 19-35 and col. 5, 11. 35--42. The Examiner found Colboume teaches as known in the art to use Fischer- Tropsch derived base oil components similar to Johnson's as a lubricating oil for diesel engines. Final Act. 3; Colboume Abstract and i-f 14. The Examiner determined it would have been obvious to have used the paraffinic base oil of Johnson as the lubricating base oil in Bardasz as taught by the combined teachings of Johnson and Colboume. Final Act. 4. The Examiner found that the combined teachings of Bardasz, Johnson and Colboume do not disclose operating a diesel engine with a fuel comprising a Fischer- Tropsch derived fuel component. Id. The Examiner found Miller '287 discloses as known in the art to use a fuel comprising a Fischer-Tropsch derived fuel component as a fuel for diesel engines. Final Act. 4; Miller '287 col. 4, 11. 7-28 and col. 8, 11. 20-32. The Examiner determined that it would have been obvious to have used any known diesel fuel in the Bardasz process such as the Fischer-Tropsch derived distillate fuel blends disclosed in Miller '287. Final Act. 5. We are unpersuaded by Appellants' arguments and agree with the Examiner's determination of obviousness for the reasons provided by the Examiner. Ans. 5-8. The Examiner provided a reasonable basis for one skilled in the art to use Fischer-Tropsch based lubricants and fuels together in a diesel engine, principally from the combined teachings of Bardasz and Miller. Final Act. 3--4; Bardasz col. 1, 11. 9-13; col. 2, 11. 27-39; col. 3, 11. 4 Appeal2014-009217 Application 12/675,149 49-53; Miller '287 col. 4, 11. 7-28 and col. 8, 11. 20-32. Appellants' arguments do not adequately address the Examiner's reasons for combining the references noted above. Absent evidence showing that the combined use of the claimed lubricant and fuel leads to unexpected results, Appellants have not adequately shown a patentable difference between the prior art and the claimed process. Accordingly, we affirm the Examiner's prior art rejection of claims 1- 3 and 5-10 for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejection of claims 1-3 and 5-10 is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 5