Ex parte MOHR et al.

Board of Patent Appeals and Interferences

Sep 13, 2001

08701188 (B.P.A.I. Sep. 13, 2001)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No.
51
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JUERGEN MOHR, KNUT OPPENLAENDER, CHARALAMPOS GOUSETIS,
RALF KAESTNER, NORBERT RIEBER MARTIN FISCHER and JUERGEN THOMAS
____________
Appeal No. 1998-1214
Application No. 08/701,188
____________________
ON BRIEF
____________
Before, GARRIS, PAK and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-3, 9 and 10, which are all of the claims
pending in this application.
BACKGROUND
Appellants' invention relates to a fuel composition for
internal combustion engines that includes detergent and
dispersant effective amounts of compounds of a formula Ia
and/or Ib as set forth in the appealed claims. An
Appeal No. 1998-1214 Page 2
Application No. 08/701,188
understanding of the invention can be derived from a reading
of exemplary claim 1, which
is reproduced below.
1. A fuel for
internal combustion
engines containing detergent-
effective and dispersan
t-effective amounts of
compounds of formulae Ia and Ib
500 to 5,000 and in each of the two formulae one of the
radicals X is OH and the other is the group
where the radicals R may be identical or different and are1
each hydrogen, alkyl, hydroxyalkyl or aminoalkyl which may be
substituted by further hydroxyl- or amino-carrying alkyl
radicals, or the two radicals R may form a nonaromatic ring.1
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Appeal No. 1998-1214 Page 3
Application No. 08/701,188
Brennan 2,856,363 Oct. 14,
1958
Kimura et al. (Kimura) 3,794,586 Feb. 26,
1974
Kummer et al. (Kummer) 4,832,702 May 23,
1989
Claims 1-3, 9 and 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kummer in view of Brennan and
Kimura.
OPINION
After careful consideration of the issues raised in this
appeal and with the arguments of both appellants and the
examiner, we find that the examiner’s § 103 rejection of the
appealed claims is not sustainable. Our reasoning follows.
As acknowledged by the examiner (answer, page 3), Kummer
discloses a fuel composition comprising polybutylamines or
polyisobutylamines but does not disclose a fuel composition
that corresponds to any of the herein appealed claims; that
is, a fuel composition that includes compounds of appellants’
formula Ia and/or Ib. As argued by appellants (brief, pages 3
Appeal No. 1998-1214 Page 4
Application No. 08/701,188
We are cognizant of appellants’ somewhat waffling view1
(brief, page 5) as to whether the reaction product of Example
3 of Kimura may or may not be a compound embraced by
appellants’ formula Ia or Ib. Nonetheless, the burden is on
and 4 and reply brief, pages 1-3), the examiner has not shown
how combining the teachings of Brennan concerning an anti-rust
lubricating oil composition containing epoxyalkaneamine
reaction products and the teachings of Kimura concerning a
lubricating oil composition that includes a reaction product
of a specified polyolefin epoxide with a polyamine with the
teachings of Kummer would have led one of ordinary skill in
the art to appellants' claimed fuel composition. Concerning
this matter, the examiner’s conclusary statements in the
paragraph bridging pages 4 and 5 of the answer regarding
“closely related” and “structurally similar” compounds
used as fuel additives in Kummer and the expected properties
thereof fall significantly short of establishing how the
combined teachings of the applied references would have
reasonably suggested the proposed modification of Kummer to
one of ordinary skill in the art and would have resulted in a
fuel composition that corresponds to appellants’ fuel
composition. 1
Appeal No. 1998-1214 Page 5
Application No. 08/701,188
the examiner to explain how that example of Kimura alone or in
combination with the other applied art would have rendered the
fuel composition claimed herein prima facie obvious to one of
ordinary skill in the art. This, the examiner has not done.
On this record, we are constrained to reverse the stated
rejection.
CONCLUSION
Appeal No. 1998-1214 Page 6
Application No. 08/701,188
The decision of the examiner to reject claims 1-3, 9 and
10 under 35 U.S.C. § 103 as being unpatentable over Kummer in
view of Brennan and Kimura is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 1998-1214 Page 7
Application No. 08/701,188
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