Ex Parte Null et al

Patent Trial and Appeal Board

May 14, 2015

11922614 (P.T.A.B. May. 14, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/922,614 12/20/2007 Volker Klaus Null TS7716US 8331
23632 7590 05/14/2015
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
SALVITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
05/14/2015 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 SHELL OIL CO.
____________________

Appeal 2013-006367
Application 11/922,614
Technology Center 1700
____________________

Before FRED E. McKELVEY, HUBERT C. LORIN and JAMES T. MOORE,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL
37 C.F.R. § 41.50

I. Statement of the Case
Shell Oil Co. (“Appellant”), the real party in interest (Appeal Brief (“Br.”), 1
unnumbered page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection 2
dated 15 March 2012. 3
The named inventors are: Volker Klaus Null and David John Wedlock. 4
We have jurisdiction under 35 U.S.C. § 134(a). 5
The application on appeal was filed in the USPTO on 20 December 2007. 6
Appellant claims priority based on International Application 7
PCT/EP/2006/063783, filed 1 July 2005, that entered the national stage on 8
20 December 2007 as to the United States. 35 U.S.C. § 371. 9

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Appellant claims priority of European Patent Application 05 106 023.4, filed 1
1 July 2005. 2
The application on appeal has been published as U.S. Patent Application 3
Publication 2009/0203835 A1 (13 August 2009). 4
Insofar as relevant to this appeal, the Examiner relies on the following 5
evidence. 6

Murphy et al.
“Murphy”
U.S. Patent 3,576,735

27 Apr. 1971

Miller et al.
“Miller”
U.S. Patent Application Publication
2005/0077209 A1
14 Apr. 2005

Appellant does not contest the prior art status of the Examiner’s evidence. 7
We mention the following additional evidence in this opinion. 8

Grade System
Chart
Comparative Viscosity Classifications,
discussed on pages 2–3 and reproduced1
on page 3 of the Office Action dated
20 August 2010

Unknown

II. Claims on Appeal 9
Claims 1, 2, and 16 are on appeal. Br., page 1 and Br., Claim Appendix; 10
Answer (“Ans.”), pages 2 and 7. 11
III. The Rejections 12
In the Answer, the Examiner has maintained the following rejections: 13

1 Also reproduced later in this opinion.

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Rejection 1: 1
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being unpatentable 2
over Murphy and Miller. Final Rejection, page 2. 3
In connection with Rejection 1, in the Brief Appellant does not argue the 4
separate patentabilty of claim 2 apart from claim 1. Accordingly, as to Rejection 1 5
we decide the appeal on the basis of Claim 1. 37 C.F.R. § 41.37(c)(1)(iv). 6
Rejection 2: 7
Claim 16 stands rejected under 35 U.S.C. § 103 over Murphy, Miller and a 8
British patent to Bourdoncle. Final Rejection, page 3. 9
In connection with Rejection 2, in the Brief, Appellant does not separately 10
argue Rejection 2. Br., unnumbered page 4. Accordingly, Rejection 2 stands or 11
falls with Rejection 1. 12
IV. Analysis 13
A. Claim 1 14
Claim 1, reproduced from the Claim Appendix of the Appeal Brief 15
(unnumbered page 5), reads [bracketed matter, strikethrough, and some indentation 16
added]: 17
A process to prepare an oil blend comprising: 18

[Step] (i) de-asphalting a mineral-derived vacuum 19
residue to obtain a de-asphalted oil, and 20

[Step] (ii) blending the de-asphalted oil obtained in 21
[Step] (i) with a paraffin base oil, 22

wherein the paraffin base oil is prepared 23
24

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[1] by oligomerisation of lower molecular weight olefins 1
to iso-paraffins having a kinematic viscosity at 100ºC of 2
between 12 and 25 mm2/sec, or 3

[2] by [a] hydroisomerisation [process2] of a paraffin wax 4
as prepared in a Fischer-Tropsch synthesis step, and dewaxing a 5
residual fraction as separated from the [an3] effluent of said 6
hydroisomerisation process. 7

B. Examiner’s Rejection 8
1. Office Action dated 20 August 2010 9
In an Office Action dated 20 August 2010, the Examiner rejected 10
claim 1 as being unpatentable under 35 U.S.C. § 103 over a combination of 11
Murphy and Miller. See pages 2–4. 12
The rejection is explained as follows (matter in brackets added and 13
italics omitted): 14
Murphy teaches a process of preparing an oil blend 15
comprising: 16

i) deasphalting a mineral-derived vacuum residue to 17
obtain a deasphalted oil (Example 1, col. 5, lines 5–35); and 18

ii) blending with a paraffin base oil (Murphy col. 6, lines 19
45–50). 20

The viscosity of the paraffin base oil in Murphy is about 21
32 cSt @ 100ºC, which is [essentially the same as] 32 mm2/sec 22

2 Bracketed matter added to provide an antecedent for “said hydroisomerisation
process” appearing at the end of the claim.

3 There is no antecedent in claim 1 for “the effluent.”

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@ 100ºC. [The 32 mm2/sec @ 100ºC] . . . viscosity has been 1
estimated from the following “Grade Systems” chart (note: 2
horizontal dashed lines were not drawn by [the] Examiner), 3
using the viscosity of 154.4 SUS/210ºF in Table 3, col. 6 [Table 4
III, Bright stock alone, Finished bright stock: Viscosity, 5
SUS/210ºF reported as 154.4]. 6

Thus, the kinematic viscosity value of Murphy in Table III 7
[32 mm2/sec.] abuts the recited range [of between 12 and 25 8
mm2/sec.]. 9

Murphy notes that low pour point is of paramount importance 10
(Murphy col. 2, lines 5–10). 11

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Miller teaches lubricant base oils having kinematic viscosities 1
at 100ºC of 3.2–20 mm2/sec (Miller ¶ [0108]), which are prepared by 2
Fischer Tropsch synthesis (Miller ¶ [0071]). Miller teaches that 3
kinematic viscosity within this range [of 3.2–20 mm2/sec.] gives an 4
excellent low pour point (Miller ¶ [0038]) and the low pour point 5
(cold flow properties) are retained in blends with other oils (Miller 6
¶ [0121]). Murphy and Miller are analogous art in that they are drawn 7
to the same field of endeavor, namely low pour point paraffin blends 8
for lubricants. At the time of the invention, it would have been 9
obvious to a person having ordinary skill to prepare the paraffin base 10
oil of Murphy by Fischer Tropsch synthesis such that a lower 11
kinematic viscosity paraffin is obtained, with the motivation of 12
lowering the pour point of the blend. 13

2. Final Rejection dated 15 March 2012 14
In the Final Rejection, the Examiner found that Murphy differs from the 15
subject matter of claim 1 in that Murphy does not describe a paraffin base oil 16
prepared by (1) oligomerisation of lower molecular weight olefins to isoparaffins 17
having a kinematic viscosity at 100ºC of between 12 and 25 mm2/sec or 18
(2) hydroisomerisation of paraffin wax prepared by a Fischer-Tropsch synthesis 19
step. Final Rejection, page 2. 20
The Examiner’s Final Rejection rationale for combining Miller with Murphy 21
remained essentially the same as that set out in the Office Action dated 20 August 22
2010: 23
At the time of the invention, it would have been obvious . . . to 24
prepare the paraffin base oil of Murphy by Fischer-Tropsch 25
synthesis such that at lower kinematic viscosity paraffin is 26
obtained, with the motion of lowering the pour point of the 27
blend (Miller teaches that kinematic viscosity of oils made by 28
Fischer-Tropsch process within this range [is said to] provide 29

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an excellent low pour point; Miller ¶ [0038]) and that the low 1
pour point (cold flow properties) are further retained in blends 2
with other oils (Miller ¶ [0121]), thereby satisfying a problem 3
that Murphy is concerned with, namely obtain low pour point 4
(Murphy col. 2, lines 5–10). 5

Final Rejection, page 3 (italics omitted). 6
3. Appellant’s Argument on Appeal 7
In its Appeal Brief, Appellant does not challenge the Examiner’s findings 8
(1) concerning the scope and content of Murphy or Miller, (2) Murphy’s explicit 9
description of a kinematic viscosity of 32 mm2/sec or (3) the analogous art status of 10
Murphy and Miller. 11
Rather, Appellant’s principal, if not only, argument is apparent from the 12
following: 13
There is a significant gap between the upper limit of 14
25 mm2/sec in one embodiment of the present invention and 15
32 mm2/sec as taught in Murphy. 16

The Miller reference teaches lubricant base oils having 17
kinematic viscosities at 100ºC of between 3.2 and 20 mm2/sec. 18
While this range overlaps the claimed range, it is even further 19
from the viscosity disclosed in Murphy. Accordingly, 20
Appellants submit that [the subject matter of] claim 1 would not 21
have been obvious in view of [a combination of] the Murphy 22
reference and the Miller reference. It is only through hindsight 23
that one of skill in the art would combine the teachings of the 24
two references to arrive at the invention of claim 1. 25

Br., unnumbered pages 3–4. 26

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We note that what Miller actually teaches with respect to viscosity is 1
not limited to a viscosity between 3.2 and 20 mm2/sec. Rather, Miller says 2
the following: 3
The lubricant base oils of the present invention have kinematic 4
viscosities at 100° C. greater than about 3.2 cSt, preferably 5
between about 3.2 cSt and about 20 cSt. 6

Miller, ¶ 0108 (on pages 9–10) (italics added). 7
Accordingly, the 3.2–30 range is a preferred range, with Miller describing a 8
suitable broader range of greater than 3.2 (the boarder range encompassing 9
Murphy’s 32 mm2/sec. embodiment). The prior art scope of a reference is not 10
limited to its preferred embodiments. 11
4. Examiner’s Answer 12
With respect to viscosity, the Examiner provides the following analysis 13
(bracketed matter added; italics omitted): 14
With respect to . . . [Appellant’s] argument that Murphy 15
. . . [explicitly describes] a kinematic viscosity outside the 16
claimed range, . . . [Appellant] is merely relying on a single 17
data point for the teaching of 32 mm2/sec, rather than 18
considering the invention as a whole. 19

Aside from measuring the viscosity in said [single] data point, 20
Murphy does not otherwise discuss the effect of viscosity, or preferred 21
ranges thereof, anywhere in Patent ‘735. As such, Murphy contains 22
no teaching away from the claimed invention. 23

The question to be addressed is whether a person having 24
ordinary skill in the art would have been apprised of the effect 25
of substituting a lower viscosity paraffin base oil suitable for 26

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blending in the invention of Murphy; this technical feature 1
[would have been] . . . obvious from Miller. 2

As Miller shows, paraffin base oils having a kinematic 3
viscosity substantially similar to the claimed paraffin base oils 4
are known in the art (Miller ¶ [0108]). These low viscosity oils 5
are known to impart properties such as excellent cold flow 6
properties in blends (Miller ¶ [0121]). Since Murphy is 7
concerned with making blends that flow at cold temperatures 8
(low pour point; Murphy [col.] 2:1-10), one means available 9
and obvious to a person having ordinary skill in the art when 10
making blends having a low pour point would have been to 11
simply select a less viscous paraffin base oil having a viscosity 12
within . . . [Appellant’s] claimed range, as taught in Miller. 13

The modification of Murphy by the paraffin base oil in 14
Miller does not destroy the invention of Murphy because 15
Murphy (1) does not place limitations on the kinematic 16
viscosity of the paraffin base oil; therefore the selection of a 17
lower viscosity oil (other than the data point shown in Murphy) 18
cannot be considered a teaching away. (2) The range of 19
temperature pour points preferred by Murphy (+ 10°F to -40°F; 20
Murphy[, col.] 2:1–10) is substantially similar to the range 21
taught by Miller (-8ºC to -35°C, which converts to [from] 22
17.6°F to -31°F; Miller ¶ [[0032]). 23

Answer, pages 5–6. 24
The Examiner goes on to say (italics omitted): 25
A case of prima facie obviousness has been made. Murphy 26
requires making an oil blend possessing a low pour point 27
(Murphy[, col.] 2:1-10). Miller teaches that the effect of a low 28
pour point (excellent cold flow) can be realized by using either 29
of . . . [Appellant’s] claimed step (ii) methods to make base oils 30
having low pour points. The modification of Murphy with the 31

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paraffin base oil of Miller does not teach away from the 1
invention of Murphy, because the oils used in both references 2
are taught to possess a substantially similar range of low 3
temperature pouring. Both applied prior art references were 4
available to a person having ordinary skill in the art more than 5
one year prior to the filing of the instant application, and the 6
rationales for their combination is taken directly from the 7
teachings of these references, hence improper hindsight was not 8
used in making the rejection. Since . . . [Appellant] has 9
provided neither evidence of unexpected results nor persuasive 10
argument as to how the instant claimed invention distinguishes 11
from the art, the rejections of record must be maintained. 12

Answer, pages 6–7.
5. Discussion 13
We affirm the Examiner’s rejection of claim 1 essentially for the 14
reasons given in (1) the Office Action dated 20 August 2010, (2) the Final 15
Rejection, and (3) the Examiner’s Answer, all as discussed above. 16
Appellant’s attack on the rejection is essentially that the claimed 17
kinematic viscosity range set out in option [1] of claim 1 as reproduced 18
above does not overlap the single explicit range described by Murphy. 19
Br., unnumbered page 3. 20
Appellant does not appear to discuss option [2] of claim 1 as 21
reproduced above. 22
Appellant does not maintain that Miller fails to describe the claimed 23
range as set out in option [1]. Basically, Appellant says that one can use 24
the Miller range in Murphy only through impermissible hindsight. Br., 25
unnumbered page 4. However, Appellant does not address convincingly the 26

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Examiner’s findings and rationale as to why one skilled in the art, as a 1
matter of fact, would have had a reason to use the paraffins of Miller in the 2
Murphy environment to achieve desirable pour points. The Examiner’s 3
reasoning is entirely plausible and consistent with the prior art teachings as a 4
whole. 5
Since the only argument presented on appeal (Br., unnumbered 6
pages 3–4) does not establish that the Examiner erred, we will affirm the 7
rejection. 8
V. Decision 9
Upon consideration of the appeal, and for the reasons given herein, it is 10
ORDERED that the decision of the Examiner rejecting claims 1, 2, 11
and 16 as being unpatentable over the prior art is affirmed. 12
FURTHER ORDERED that no time period for taking any 13
subsequent action in connection with this appeal may be extended under 37 C.F.R. 14
§ 1.136(a)(1)(iv). 15
AFFIRMED 16
17
bar 18