Ex Parte Krull et al

Patent Trial and Appeal Board

Mar 27, 2013

11009870 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/009,870 12/10/2004 Matthias Krull 2003DE454 4738
25255 7590 03/28/2013
CLARIANT CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
4000 MONROE ROAD
CHARLOTTE, NC 28205
EXAMINER
MCCAIG, BRIAN A
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
03/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte MATTHIAS KRULL, BETTINA SIGGELKOW, and
MARTINA HESS
__________

Appeal 2012-002198
Application 11/009,870
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to mineral fuel oils comprising
constituents of vegetable or animal origin and having improved cold flow
properties and the use of an additive as a cold flow improver in such fuel oils
(Spec. para. [0001]).
App
App

eal 2012-0
lication 11
Claim 1
1.
FI) 89-5

F2
animal o

A
mol% of
having a

B
compose

at
bo
di
C
w
of molar
alkyl rad
radical o
21.0 to 2
W1 is
th
W2 is
th
n1 ar
m
02198
/009,870
is illustrat
A fuel oil
0 % by vo
) 11-50%
rigin, and
) at least o
a comono
C1-C18-al
) at least o
d of
B1) at
least one
nd, and

B2) at
carboxylic
8-C16-alkyl

here the su
averages
ical of mo
f the ester
8.0, where
a molar pr
e alkyl rad
a molar pr
e alkyl rad
e individu
onomer 1,
ive:
compositi
lume of a
by volum
a cold add
ne copolym
mer of at
kyl radical
ne comb p
least one
C8-C18-aik
least one
acid as m
radical bo
m Q
of the carb
nomer 1 o
moiety of

oportion o
ical of mo
oportion o
ical of the
al chain le

2
on F) com
fuel oil of
e of a fuel
itive comp
er compo
least one a
and
olymer co
olefin as m
yl radical
ethylenica
onomer 2
nded via a
on chain l
n the one
monomer
f the indiv
nomer 1,
f the indiv
ester grou
ngths in th
prising
mineral or
oil of vege
rising the
sed of eth
crylic or v
ntaining st
onomer 1
on the olef
lly unsatu
which bea
n ester mo
ength distr
hand and t
2 on the o
idual chai
idual chai
ps of mon
e alkyl rad
igin and
table and/
constituen
ylene and
inyl ester
ructural un
which be
inic doubl
rated
rs at least
iety,

ibutions in
he alkyl
ther is fro
n lengths
n lengths
omer 2,
ical of
or
ts
8-21
its
ars
e
one
the
m
in
in
Appeal 2012-002198
Application 11/009,870

3
n2 are individual chain lengths in the alkyl radical of the
ester moiety of monomer 2,

i. is a serial variable for the individual chain lengths in the
alkyl radical of monomer 1, and
j is a serial variable for the individual chain lengths in the
alkyl radical in the ester moiety of monomer 2.

Appellants appeal the following rejection:
Claims 1-18 are rejected under 35 U.S.C. § 103(a), as being unpatentable
over Davies (US 6,143,044, issued Nov. 7, 2000).
Appellants argue the claims as a group1 (App. Br. 10-18). We select
claim 1 as representative.

ISSUES
1. Did the Examiner reversibly err in finding that Davies’ disclosure
would have rendered obvious the fuel composition of claim 1 having
the recited cold additive comprising constituents (A) and (B)? We
decide this issue in the negative.
2. Do the Examiner’s findings and conclusions regarding Davies
considered anew in light of Appellants’ Specification evidence2 of

1 Appellants argue for the first time the Examiner’s rejection of claims 3 and
14-16 in the Reply Brief (Reply Br. 4-8). We shall not consider such
untimely argument. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“The reply brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).
Appeal 2012-002198
Application 11/009,870

4
unexpected results weigh in favor of nonobviousness? We decide this
issue in the negative.

FINDINGS OF FACT AND ANALYSES
Issue (1)
The Examiner’s findings and conclusions regarding claim 1 are
located on pages 5-7 of the Answer. The Examiner finds that Davies teaches
flow improver additives for compositions both petroleum and vegetable
based (Ans. 5). The Examiner finds that Davies teaches the flow improver
additive comprises materials that fall within the ranges of materials recited
for constituents (A) and (B) recited in claim 1 (Ans. 5-6). The Examiner
finds that Davies teaches using the same materials to make constituents (B)
(i.e, a comb polymer) (Ans. 5-6). The Examiner finds that the Q value of
claim 1 is inherent to the constituent (B) (i.e., a comb polymer) because the
comb polymer is prepared in a similar manner to the comb polymer of the
instant application (Ans. 6). In the alternative, the Examiner finds that
Davies fails to teach the Q value set forth in the claims (Ans. 7). The
Examiner concludes that the claimed Q value would have been obvious
because Davies uses the same materials to make the comb polymers (i.e.,
constituent (B)) such that it would have been reasonable to expect Davies’
composition to meet the claimed Q value. The Examiner finds that Davies
fails to teach the recited proportions of the fuel oil to vegetable oil or the

2 Appellants refer to a Rule 132 Declaration filed September 22, 2010 for the
first time in the Reply Brief (Reply 2). The principal Brief’s Evidence
Appendix indicates that no additional evidence is relied upon by Appellants
(App. Br. Evidence App’x.). Appellants could have introduced this
evidence in the principal Brief but chose not to do so. We shall not consider
such untimely submitted evidence. Borden, 93 USPQ2d at 1474.
Appeal 2012-002198
Application 11/009,870

5
recited ratio of copolymer (i.e., constituent (A)) to comb polymer (i.e.,
constituent (B)) recited in the claims (Ans. 6). The Examiner concludes that
the claimed proportions and ratio would have been a matter of routine
optimization of result effective variables (Ans. 7).
Appellants concede that Davies “discloses dialkyl esters of
ethylenically unsaturated carboxylic acids and α-olefins which may be
combined in a way to give copolymers satisfying the Q number
requirement” (App. Br. 12). However, Appellants argue that Davies is not
specific in disclosing combinations of an ethylene copolymer (i.e.,
constituent (A)) and a comb polymer (i.e., constituent (B)) with the comb
polymer having a Q value between 21 and 28. Id. Appellants contend that
Davies discloses a very large number of comb polymers which may be used
together with an ethylene/vinyl ester copolymer (App. Br. 14).
We understand Appellants to argue that there are many combinations
of compounds taught by Davies and Davies does not identify specifically the
claimed combination. Contrary to this argument, whether Davies may
disclose a multitude of effective combinations does not render any particular
formulation less obvious. Merck & Co., Inc. v. Biocraft Lab’s., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989). The Examiner makes specific findings as to
what Davies teaches and how one of ordinary skill in the art would have
combined those teachings, which Appellants’ arguments do not specifically
refute (Ans. 5-7). Accordingly, the Examiner hasDavies established a prima
facie case of obviousness over Davies.

Appeal 2012-002198
Application 11/009,870

6
Issue (2)
Appellants argue that the evidence contained in Table 5 and Table 9
show that a fuel composition containing the flow improver additive having
compounds that fall within the claimed constituents (A) and (B) have
unexpectedly better cold flow properties (App. Br. 15-16).
The Examiner finds that Appellants’ evidence is not probative of
nonobviousness because it fails to provide a comparison of the claimed
invention with the closest prior art which is commensurate in scope with the
claims (Ans. 11). We agree.
Appellants’ evidence in Tables 5 and 9 use comb polymers made from
maleic anhydride copolymerized with C12 or C14 -olefins and derivitized
using C10, C12, C14 or C16 alcohols (Spec. para. [00068]-[00069], Table 5).
These comb polymers are used in the compositions of Table 9. However,
this showing does not establish unexpected results over the entire range of
compounds recited in making the constituent (B) (i.e., comb polymer)
recited claim 1. In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980). For
example, component B1 includes “at least one olefin as monomer 1 which
bears at least one C8-C18-alkyl radical on the olefinic double bond” (claim
1). Also, component (B2) of claim 1 recites “at least one ethylenically
unsaturated dicarboxylic acid as monomer 2 which bears at least one C8-C16-
alkyl radical bonded via an ester moiety.”
Also, Appellants have not explained why their showing in Tables 5
and 9 should be considered a comparison that is as close or closer than that
of Davies (i.e., the closest prior art). Appellants’ evidence must compare the
claimed invention to the closest prior art. In re Burckel, 592 F.2d 1175
(CCPA 1979).
Appeal 2012-002198
Application 11/009,870

7
On this record and for the above reasons, we affirm the Examiner’s
§ 103 rejection over Davies.

DECISION
The Examiner’s decision is affirmed.

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).

ORDER
AFFIRMED

kmm