Ex Parte MacPherson et al

Patent Trial and Appeal Board

Feb 18, 2016

11832439 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111832,439 08/01/2007
64091 7590 02/22/2016
AFTON CHEMICAL CORPORATION
LUEDEKA NEELY GROUP
P.O. BOX 1871
KNOXVILLE, TN 37901
FIRST NAMED INVENTOR
Ian MacPherson
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.
63094.US (AC-7842) 6086
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
LNG.PA TENT@gmail.com
docketing@luedeka.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN MACPHERSON, JOSEPH W. ROOS, and
THOMAS G. QUINN
Appeal2014-006780
Application 11/832,439
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claim 1--4, 9-23, 31, 32, 35 and 37--46 under
35 U.S.C. § 103(a) based on at least Chiu (US 2003/0186824 Al, pub.
October 2, 2003).2' 3 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Real Party in Interest is stated to be Afton Chemical Corporation (Br.
2).
2 The Examiner applied additional prior art to dependent claims 9, and 14--
19 (Final Act. 7-10). Appellants do not rely upon any additional arguments
for these claims (Br. generally).
3 Appellants do not appeal the rejection of claim 6 as the claim was
cancelled in an amendment after final dated May 29, 2013.
Appeal2014-006780
Application 11/832,439
The Examiner's provisional obviousness-type double patenting
rejections (Final Rej. 3, 4; Ans. 2, 3) are summarily affirmed as Appellants
do not provide any argument directed towards these rejections (Br. 4, 11 ).
The Examiner also inadvertently omitted claims 33 and 34 from the
final rejection (Br. 16). While the Final Rejection cover sheet indicated
these claims were rejected (and thus their omission may be considered
harmless error), the Examiner nonetheless made a new ground of rejection in
the Examiner's Answer to explicitly include these claims (Ans. 9).
Appellants have not filed a responsive reply brief. Accordingly, these
claims are dismissed; see 37 CPR§ 41.39(b) and MPEP § 1207.03.
Representative claim 1 is directed to "[a]n environmentally
compatible fuel additive composition" (Claims App).
Independent claim 3 1 is directed to a "method of making an
environmentally compatible fuel composition" that includes "a minor
amount" of an additive composition corresponding to claim 1, and
independent claim 37 is directed to an "environmentally compatible fuel
composition" that includes "a minor amount" of an additive composition
corresponding to claim 1 (Id.).
ANALYSIS
Upon consideration of the appeal record, including the Appellants'
position in this appeal as set forth on pages 12-16 of the Appeal Brief, we
affirm the Examiner's rejections for the reasons stated by the Examiner
(Final Act. 2-12; Ans. 3-12).
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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Appeal2014-006780
Application 11/832,439
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'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Notably, Appellants have not presented any cogent arguments
sufficient to address the Examiner's obviousness position. Appellants
merely assert, contrary to the record, that the Examiner "failed to consider"
that these claims are directed to a fuel composition (Br. 12). First, many of
the claims, e.g., claim 1, 2, etc., are directed to an additive composition, not
a fuel composition per se (Ans. 10). As such the composition of Chiu
merely needs to be capable of use as a fuel additive. Appellants have
offered no persuasive technical reasoning or proof that the composition of
Chiu is incapable of being used as a fuel additive. Indeed, the Examiner's
finding that lubricants, such as those taught in Chiu, are known to be used as
fuel additives (Id.) stands unrebutted on this record (Br. 12-15).
Accordingly, Appellants have not shown error in the Examiner's
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have used an environmentally friendly lubricant
composition as exemplified by Chiu as an additive to a known fuel
composition (e.g., Ans. 3-5; Br., generally,). KSR, 550 U.S. at 417 (The
predictable use of prior art elements or steps according to known methods
for their established functions is likely to be obvious when it does no more
than yield predictable results). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
3
Appeal2014-006780
Application 11/832,439
Appellants' additional arguments are adequately addressed by the
Examiner (Ans. 10 and 11).
In summary, the appeal is dismissed as to claims 33 and 34, and all of
the Examiner's remaining § 103 rejections are affirmed.
The Examiner's provisional obviousness-type double patenting
rejections are summarily 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)(l).
AFFIRMED
KRH
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