11920471 (B.P.A.I. Aug. 31, 2012)

Ex Parte Null

Board of Patent Appeals and InterferencesAug 31, 2012

11920471 (B.P.A.I. Aug. 31, 2012)

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. 11/920,471 11/15/2007 Volker Klaus Null TS9560US 7304 23632 7590 09/04/2012 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 772522463 EXAMINER STEIN, MICHELLE ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 09/04/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte VOLKER KLAUS NULL ______________ Appeal 2011-002380 Application 11/920,471 Technology Center 1700 _______________ Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Applicant appeals from the final rejection of claims 8-13: claims 8 and 10-12 under 35 U.S.C. § 102(b) over Null (US 2004/0014877 A1), claim 13 under 35 U.S.C. § 102(b) over Null and Anstock (US 4,786,402), and claim 9 under 35 U.S.C. § 103(a) over Null. App. Br. 3; Ans. 3, 5, 6. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010). We affirm the decision of the Primary Examiner. Appeal 2011-002380 Application 11/920,471 2 We decide this appeal on claim 8 as argued by Appellants. Br. 3, 4. 37 C.F.R. § 41.37(c)(1)(vii) (2010). Opinion We disagree with Appellant that the Examiner erred in finding that Null would have described to one of ordinary skill in the art a process for the preparation of polymer compositions for food contact which comprises preparing a Fischer-Tropsch derived white oil by a process having five steps, including step (d) of distilling a white oil precursor fraction obtained in the preceding pour point reducing step (c) to obtain a Fischer-Tropsch derived white oil having a kinematic viscosity at 100 ºC of in between more than 2 mm2/s and less than 7 mm2/s, thus anticipating representative claim 1 within the meaning of § 102(b). We find that Null describes a four step process for preparing a Fischer-Tropsch derived white oils having a kinematic viscosity at 100 ºC between 2 mm2/s and 30 mm2/s which includes step (d) of distilling a white oil precursor fraction obtained in the preceding pour point reducing step (c) to obtain a white oil “having the desired [kinematic] viscosity.” Null ¶¶ 0014-0015. Null describes a four step process for preparing Fischer-Tropsch derived white oils having a kinematic viscosity at 100 ºC of greater than 7 mm2/s which includes step (d) of distilling a white oil precursor fraction obtained in the preceding pour point reducing step (c) to obtain the desired white oil. Null ¶¶ 0017-0021. Null describes that “[i]n step (d) the dewaxed effluent of step (c) . . . is separated into one or more low viscosity base oil product and the white oil.” Null ¶ 0037. Null describes Example 1 in which “[a] bottom distillate fraction” that is a white oil having a kinematic Appeal 2011-002380 Application 11/920,471 3 viscosity at 100 ºC of 11.11 mm2/s, is obtained by a process having the described step (d). Null ¶¶ 0047-0048, Table 1. We find a preponderance of the evidence in Null supports the Examiner’s position that “[b]ecause [Null] discloses a kinematic viscosity between 2 mm2/s and 30 mm2/s . . . any subset of the overall disclosed range is deemed to yield the desired properties.” Ans. 7, citing Null ¶ 0014. Indeed, Null does not describe any differences or criticality in distillation parameters in obtaining Fischer-Tropsch derived white oils having kinematic viscosities at 100 ºC across the broad range of between 2 mm2/s and 30 mm2/s, including Fischer-Tropsch derived white oils falling within preferred ranges within the broad range and the Fischer-Tropsch derived white oil illustrated in Example 1. Cf. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344-45 (Fed. Cir. 2012) (distinguishing Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006)) (“[T]he disclosure that this chemical process works for systems with 150 ppm or less is what anticipates. . . . [H]ere, there is no allegation of criticality or any evidence demonstrating any difference across the range.”). Accordingly, we agree with the Examiner’s finding that Null describes to one of ordinary skill in the art a process for preparing polymer compositions comprising preparing Fischer-Tropsch derived white oils in five process steps which includes each and every limitation of the claimed process preparing Fischer-Tropsch derived white oils having a kinematic viscosity at 100 ºC of in between more than 2 mm2/s and less than 7 mm2/s specified in representative claim 1, and enables this person to practice an embodiment of the claimed process without undue experimentation. Ans. 4, 6. See ClearValue, 668 F.3d at 1344 (quoting Am. Calcar, Inc. v. Am. Appeal 2011-002380 Application 11/920,471 4 Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). We are not convinced otherwise by Appellant’s contentions. Appellant submits that Null does not describe Fischer-Tropsch derived white oils having the claimed kinematic viscosity at 100 ºC in the range of more than 2 mm2/s and less than 7 mm2/s, which white oils are used in “polymer compositions [that] are less inclined to turn turbid” as demonstrated in Specification Examples. Br. 3-4, citing Spec. Table 2. Appellant thus argues “that the claimed [kinematic viscosity at 100 ºC] range is a narrow selection over the disclosure of Null” which allows the formation of polymer compositions without turbidity and compatibility problems, and thus the “invention” is not anticipated. Br. 4. The difficulty we have with Appellant’s position is that Appellant relies solely on the properties of the products of a process that is described and enabled throughout the kinematic viscosity range of 2 mm2/s to 30 mm2/s. Appellant’s “discovery” of a previously unrecognized property of the product does not demonstrate that the process now claimed is a different process. Appellant’s reliance on the same position with respect to the respective grounds of rejection of claims 9 and 13 is likewise unpersuasive. Accordingly, based on our consideration of the totality of the record before us, we have weighed the evidence of anticipation and of obviousness found in Null, and in the combination thereof with Anstock, with Appellant’s countervailing evidence of and argument for non-anticipation and nonobviousness and conclude, by a preponderance of the evidence and weight of argument, that the claimed invention encompassed by appealed Appeal 2011-002380 Application 11/920,471 5 claims 8 and 10-13 would have been anticipated as a matter of fact under 35 U.S.C. § 102(b), and claim 9 would have been obvious as a matter of law under 35 U.S.C. § 103(a). The Primary 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)(iv). AFFIRMED