Ex Parte Jois et al

Board of Patent Appeals and Interferences

Jul 15, 2009

10860219 (B.P.A.I. Jul. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YAJNANARAYANA HALMUTHUR JOIS,
MICHAEL PHILLIP SMITH and JOHN ROBERT POWERS
________________

Appeal 2008-006018
Application 10/860,219
Technology Center 1700
________________

Decided: 1July 15, 2009
________________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8, 10, 11, 14, 17-19, 21-35, 37-50, 52-81 and 115-149.
Claims 82-114, which are all of the other pending claims, stand withdrawn
from consideration by the Examiner. We have jurisdiction under
35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-006018
Application 10/860,219

The Invention
The Appellants claim processes for making a rubber extender oil
composition and a rubber composition comprising the rubber extender oil
composition. Claim 1 is illustrative:
1. A process for the preparation of a rubber extender oil composition
having a polynuclear aromatics content of at most 3 wt.%, comprising
blending a hydrotreated paraffinic base oil having a polynuclear
aromatics content of at most 3 wt.% and a hydrotreated naphthenic
base oil having a polynuclear aromatics content of at most 3 wt.%.

The References
Foucht 5,011,902 Apr. 30, 1991
Aldous EP 1 118 652 A1 Jul. 25, 2001
The Rejection
Claims 1-8, 10, 11, 14, 17-19, 21-35, 37-50, 52-81 and 115-149 stand
rejected under 35 U.S.C. § 103 over Aldous in view of Foucht.
OPINION
We affirm the Examiner’s rejection.
The Appellants separately argue only claims 131 and 135 (Br. 14-
15).2 We therefore limit our discussion to those claims and one of the other
claims, i.e., claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

2 The Appellants argue, regarding claims 115-130, that “the 3 wt.%
limitation with respect to the rubber composition should be deleted”
(Br. 16). Because that is not an appealable issue, we do not further address
that argument.
2
Appeal 2008-006018
Application 10/860,219

Claim 1
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, mixing a hydrotreated paraffinic
base oil with a hydrotreated naphthenic base oil?
Findings of Fact
The Appellants acknowledge:
1) “Certain polynuclear aromatics (PNA), also known as higher
aromatic rings, polycyclic aromatic (PCA) and poly aromatic
hydrocarbons (PAH), are known carcinogens.
Rubber extender oil compositions having greater than 3 wt.%
(IP346) polynuclear aromatics are classified as “carcinogens”
according to the European legislation (EU Substance Directive
67/548/EEC) and must be labeled with the risk phrase “R45” (may
cause cancer) and the label “T” (toxic, skull and crossbones) in
Europe” (Spec. 2:16-25).

2) It was known in the art to hydrotreat distillate aromatic extracts to
lower the concentration of PNA to below 3 wt% (Spec. 3:15-19).

3) At the time of the Appellants’ invention, hydrotreated paraffinic
base oils and hydrotreated naphthenic base oils were readily available
commercially (Spec. 13:25-27; 14:26-28; Br. 14).3

Aldous discloses process oils used for the same purpose as the
Appellants’ rubber extender oil (Spec. 1:11-19), i.e., “in processing natural
and synthetic rubbers for a number of reasons such as reducing the mixing

3 Foucht is relied upon by the Examiner (Ans. 4-5) for a disclosure of the
commercial availability of hydrotreated naphthenic oils and hydrotreated
paraffinic oils (col. 6, l. 60 – col. 7, l. 6).
3
Appeal 2008-006018
Application 10/860,219

temperature during processing of the rubber and preventing scorching or
burning of the rubber polymer when it is being ground down to a powder, or
modifying the physical properties of the finished rubber and the like”
(Aldous, p. 2, ll. 10-13). Aldous teaches that “[d]ue to the decline in the
availability of naphthenic feeds, paraffinic distillates are being substituted
for portions or all of some naphthenic distillates since the demand for higher
solvency process oils is still increasing” (p. 2, ll. 18-19).
Analysis
The Appellants argue that Aldous’ aromatic extract is not a
naphthenic base oil (Br. 11).
Aldous extracts paraffinic rich feed such as a distillate with an
aromatic extraction solvent to obtain aromatic extract oil which is mixed
with the same or different viscosity paraffinic rich feed (p. 2, ll. 41-54).
Because the aromatic extract oil is obtained from paraffinic rich feed it does
not appear to be naphthenic base oil. However, Aldous teaches that
paraffinic distillates were substituted for portions of naphthenic feeds due to
the declining availability of naphthenic feeds (p. 2, ll. 18-19). It is
undisputed that the paraffinic distillates are paraffinic base oils and the
naphthenic feeds are naphthenic base oils. The substitution of paraffinic
base oil for a portion of the naphthenic base oil results in a mixture of
paraffinic base oil and naphthenic base oil. The question is whether it would
have been prima facie obvious to one of ordinary skill in the art to mix
hydrotreated paraffinic base oil with hydrotreated naphthenic base oil.
The Appellants argue that hydrotreating the paraffinic base oil and the
naphthenic base oil before they are mixed has the advantage of eliminating
the need to hydrotreat them after they are mixed (Br. 11-12).
4
Appeal 2008-006018
Application 10/860,219

One of ordinary skill in the art would have mixed hydrotreated
paraffinic and naphthenic base oils because, as acknowledged by the
Appellants (Spec. 13:25-27; 14:26-28; Br. 14), they were readily available
commercially. One of ordinary skill in the art, through no more than
ordinary creativity, would have used the readily available hydrotreated base
oils to avoid the need to hydrotreat the base oils. See KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). Such a person would
have used base oils which have been hydrotreated sufficiently to lower their
polynuclear aromatics content to at most 3 wt% to avoid having to label the
process oil made from them “carcinogenic” in Europe (Spec. 2:20-25).
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, mixing a hydrotreated paraffinic
basic oil with a hydrotreated naphthenic base oil.
Claim 131
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, blending hydrotreated paraffinic
base oil and hydrotreated naphthenic base oil in situ during the preparation
of a rubber composition?

5
Appeal 2008-006018
Application 10/860,219

Analysis
The Appellants argue that Aldous’ process oil is not blended in situ
during the preparation of the rubber composition (Br. 14-15).
In general, reciting a particular order of mixing of the components in a
process does not patentably distinguish the process over one having a
different order of mixing. See In re Burhans, 154 F.2d 690, 692 (CCPA
1946). In the present case it appears that the same rubber composition
would be obtained regardless of whether hydrotreated paraffinic base oil and
hydrotreated naphthenic base oil are mixed together and then mixed into a
rubber composition or are mixed together as they are mixed into the rubber
composition. Hence, it appears that one of ordinary skill in the art would
have used either order of mixing.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, blending hydrotreated paraffinic
base oil and hydrotreated naphthenic base oil in situ during the preparation
of a rubber composition.
Claim 135
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, blending hydrotreated paraffinic
base oil and hydrotreated naphthenic base oil to produce a rubber extender
oil having a pour point of about -8°C or lower?

6
Appeal 2008-006018
Application 10/860,219

Analysis
The Appellants argue that “[s]ince the examiner has not established
that the process oil produced in Aldous is a blend of paraffinic base oil and
naphthenic base oil, the pour point of Aldous’ process oil is not relevant to
claim 135” (Br. 15).
As pointed out above, the prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, mixing a hydrotreated paraffinic
base oil and a hydrotreated naphthenic base oil, each having a polynuclear
aromatics content of at most 3 wt.%, to produce a rubber extender oil. The
Appellants acknowledge that a pour point range of about -8°C or lower is
within the range known by those skilled in the art to be useful for rubber
extender applications (Spec. 10:5-11). One of ordinary skill in the art, to
obtain a useful rubber extender oil, would have made the rubber extender oil
such that it has a pour point within the useful range, including the -8°C or
lower range.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, blending hydrotreated paraffinic
base oil and hydrotreated naphthenic base oil to produce a rubber extender
oil having a pour point of about -8°C or lower.
DECISION/ORDER
The rejection of claims 1-8, 10, 11, 14, 17-19, 21-35, 37-50, 52-81
and 115-149 under 35 U.S.C. § 103 over Aldous in view of Foucht is
affirmed.
It is ordered that the Examiner’s decision is affirmed.
7
Appeal 2008-006018
Application 10/860,219

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

tc

SHELL OIL COMPANY
P.O. BOX 2463
HOUSTON, TX 77252-2463
8