Ex Parte Peiffer et alDownload PDFBoard of Patent Appeals and InterferencesAug 16, 200409452982 (B.P.A.I. Aug. 16, 2004) Copy Citation - 1 - The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. Paper No. 29 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte DENNIS G. PEIFFER, BRID DILWORTH and ROBERT DRYDEN TACK ______________ Appeal No. 2004-1566 Application 09/452,982 _______________ ON BRIEF _______________ Before GARRIS, WARREN and JEFFREY T. SMITH, Administrative Patent Judges. WARREN, Administrative Patent Judge. Decision on Appeal and Opinion We have carefully considered the record in this appeal under 35 U.S.C. § 134, including the opposing views of the examiner, in the answer, and appellants, in the brief, and based on our review, find that we cannot sustain the rejections of appealed claims 42 through 46, 58 and 60 through 62,1 all of the claims in the application, under 35 U.S.C. §§ 102(a) and 102(e) as being unpatentable over Krull et al. (Krull).2,3 1 See the appendix to the brief. 2 Answer, pages 3-6. 3 While the examiner has applied Krull under §§ 102(a) and 102(e), we find that Krull issued January 6, 1998, more than one year before the present application was filed on December 2, 1999. On this record, Krull is an available reference with respect to the claimed invention under 35 U.S.C. § 102(b). Appeal No. 2004-1566 Application 09/452,982 - 2 - We find that, when considered in light of the written description in the specification, including the drawings, as interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the plain language of the appealed claim 42, on which all other appealed claims depend, specifies a middle distillate fuel composition comprising at least the specified fuel oil and a copolymer comprising at least an olefin or mixture of olefins and a compound selected from the group consisting of, inter alia, maleic acid and maleic anhydride, wherein, after the preparation of the copolymer, it is derivatized with an amine selected from the group consisting of, inter alia, n-octylamine and n-hexylamine. The examiner’s determination of anticipation is based on the allegation that in Krull, “the resulting copolymer is derivatied [sic, derivatized] with polyetheramines or primary or secondary amines,” citing col. 5, lines 10-15, and col. 6, lines 27-30 (answer, page 3). The examiner further alleges that “radical X” is “derived from a reaction of dicarboxylic anhydride groups with primary amines and secondary amines (col. 4, lines 37-40),” that are “depicted by formula ENR3R4 in col. 4, line 40, and are depicted by specific amines, clearly named in col. 4, line [sic] 41-46,” that are n-hexylamine and n-octylamine, at col. 4, line 43, which “are the very amines named in” claim 42 (answer, page 4; original emphasis deleted). Thus, the examiner concludes that because Krull discloses the olefin monomer, maleic anhydride, and an “amine of formula (I) is named as N-hexylamine or N-octylamine,” all of the limitations of claim 42 are met (answer, page 4). Appellants do not dispute that Krull discloses that copolymers are “first . . . formed and then ‘reacted with a polyetheramine of the Formula H and/or an amine of the Formula I,” citing col. 5, lines 10-15, and col. 6, lines 27-29, and that “an amine of Formula I is named as n- hexylamine or n-octylamine,” but contend that Krull states “at column 4, lines 30-31, that one radical R9 or R10 of the formula [I] must be Z-OH which means that Formula I can only be an alkanolamine,” that is, “[i]t cannot be a simple alkyl primary amine as set forth in appellants’ claims; it must have an OH group” (brief, page 3). Appellant states that they “cannot explain why [Krull] decided to list several primary alkylamines at lines 41-46 of column 4 of the . . . Appeal No. 2004-1566 Application 09/452,982 - 3 - reference, but there is simply no basis on which to apply this paragraph to Formula I” (brief, page 4). In response, the examiner submits that Krull col. 4, lines 38-40, “states radical X is derived from the reaction products of dicarboxylic anhydride groups (that came from maleic anhydride) with . . . amines of the formula ENR3R4,” which formula includes the amines specified in claim 42, as appellants admit (answer, pages 5-6). Thus, the examiner argues that, as explained in this disclosure, Krull uses the primary amines depicted by the formula “to derivatize the dicarboxylic anhydride groups of a polymer derived from dicarboxylic anhydride (e.g., maleic anhydride) with an olefin” (answer, page 6). It is well settled that the examiner has the burden of making out a prima facie case of anticipation in the first instance by pointing out where each and every element of the claimed invention, arranged as required by the claim, is described identically in the reference, either expressly or under the principles of inherency, in a manner sufficient to have placed a person of ordinary skill in the art in possession thereof. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Whether the teachings and inferences that one skilled in this art would have found in the disclosure of an applied reference would have placed this person in possession of the claimed invention, taking into account this person’s own knowledge of the particular art, is a question of fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), and cases cited therein (a reference anticipates the claimed method if the step that is not disclosed therein “is within the knowledge of the skilled artisan.”); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). We have carefully considered the portions of the references argued by the examiner and appellants in the context of the disclosure of Krull as a whole. We find that, as a matter of fact, one skilled in the art would have found that Krull discloses copolymers that can contain, inter alia, the bivalent structural unit A which has the amine radicals “X” and “Y” (formula (A), col. 2, lines 45-51), wherein “Y is X or NRR3” and “X is,” inter alia, “NR3R4” (col. 3, lines 2 and 3), Appeal No. 2004-1566 Application 09/452,982 - 4 - which, of course, are the amine radicals of amide and imide moieties of bivalent structural unit A (e.g., col. 6, lines 30-37). Krull teaches with respect to the amine radical “Y” as “NRR3” of bivalent structural unit A that “[t]he radical NRR3 (structural unit A) . . . [is] derived from polyetheramines of the general formula (H) or from alkanolamines of the formula (I),” wherein the formula I is depicted at col. 4, lines 23-26, as R9 / H – N (I) \ R10 The meaning of formula members “R9 and R10” includes the “hydrogen” as well as the “proviso that at least one radical R9 or R10 is Z-OH” (col. 4, lines 28-31), and “examples of alkanolamines” are set forth at col. 4, lines 32-37. We find it clear that, contrary to the examiner’s position, one skilled in this art would have found that the primary or secondary amines encompassed by formula I are primary and secondary alkanolamines by definition, and thus, include no primary or secondary alkylamines. Indeed, no primary or secondary alkylamines are exemplified with respect to formula I, as appellants point out. Krull teaches with respect to radical “Y is X” and the amine radical “X is,” inter alia, “NR3R4” of bivalent structural unit A that “[t]he radical X [of structural unit A] is derived from the reaction products of the dicarboxylic anhydride groups with alcohols of the formula HO-(C1-C30)-alkyl and/or amines of the formula ENR3R4” (col. 4, lines 38-40), wherein formula members “R3 and R4” are defined at col. 3, lines 4-14. The formula ENR3R4 includes primary and secondary alkylamines, and indeed, such compounds are exemplified (col. 4, lines 41-50), including the primary alkylamines “n-hexylamine, n-octylamine” at col. 4, line 43. We agree with appellants that Krull discloses that the copolymers prepared from α,β-unsaturated dicarboxylic anhydrides of the general formula E and/or F as one of the monomers, are derivatized only with a polyetheramine of the formula H or an alkanolamine of formula I to prepare the reaction products of the reference as set forth at col. 5, lines 11-16, and col. 6, lines 27-29, to which we add col. 6, line 30 et seq. Appeal No. 2004-1566 Application 09/452,982 - 5 - Indeed, we determine that the disclosure at col. 5, lines 11-16, and col. 6, lines 27-29, taken with the disclosure at col. 6, line 30, to col. 7, line 16, would reasonably suggest to one skilled in the art that the reaction of a copolymer prepared with α,β-unsaturated dicarboxylic anhydride(s) of the general formula E and/or F, with the polyetheramines of formula H or from alkanolamines of the formula I would provide the polyetheramine radical “Y” is “NRR3” to form the bivalent structural unit A in the copolymer. The disclosure at col. 6, line 30, to col. 7, line 16, teaches that a compound of formula H is the preferred reactant with the copolymer, and if compounds of the formula I are employed, the reaction product is subjected to oxyalkylation to form the polyether radical. We further find that Krull teaches in col. 7, lines 17-26, a variant wherein an α,β-unsaturated dicarboxylic anhydride monomer of the formulae E and/or F is reacted with a polyetheramine of formula H to provide the polyetheramine radical “Y” is “NRR3” to form a derivatized monomer that provides the bivalent structural unit A upon copolymerization. Krull illustrates the variant in Examples 10-13. Thus, Krull provides specific disclosure of two methods to prepare copolymers containing bivalent structural unit A wherein radical “Y” is “NRR3.” Therefore, there remains the determination of the teachings in Krull as to the manner that “[t]he radical X [of structural unit A] is derived from the reaction products of the dicarboxylic anhydride groups with alcohols of the formula HO-(C1-C30)-alkyl and/or amines of the formula ENR3R4” (col. 4, lines 38-40) to form bivalent structural unit A. We find that Krull states that “[s]pecifically, the structural units A . . . are derived from α,β-unsaturated dicarboxylic anhydrides of the general formulae E and/or F” (col. 3, lines 48-65), and in this respect, Krull further teaches the preparation of copolymers “containing structural units derived from an α,β-unsaturated dicarboxamide” (col. 6, lines 58-62). Based on this evidence, we find that one skilled in this art would infer from this teaching that copolymers containing the radical “Y is X” and/or the radical “X” wherein “X” is,” inter alia, “NR3R4” are prepared from α,β-unsaturated monomers containing such radicals, for indeed, Krull also shows the same method for preparing α,β-unsaturated monomers containing the radical “Y” is “NRR3,” as illustrated in Examples 10 and 11, and there is no specific disclosure in Krull to derivatize a copolymer with a compound having the formula ENR3R4. Appeal No. 2004-1566 Application 09/452,982 - 6 - Therefore, while one skilled in this art would recognize that the copolymer is capable of being reacted with a primary amine falling within the disclosed formula ENR3R4, there is no direction in Krull to do so. Cf. In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972). Indeed, to the extent that the examiner’s position is that one skilled in this art would arrive at a copolymer identical or substantially identical to the copolymer defined in appealed claim 42 by following the synthesis routes set forth in Krull, the analysis necessary to support such a position is not set forth in the record. See generally, Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58 (“The Board held that the compositions claimed by Spada ‘appear to be identical’ to those described by Smith. While Spada criticizes the usage of the word ‘appear’, we think that it was reasonable for the PTO to infer that the polymerization by both Smith and Spada of identical monomers, employing the same or similar polymerization techniques, would produce polymers having the identical composition.”); In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977). Accordingly, we determine as a matter of fact that Krull does not describe the claimed invention within the meaning of § 102, and thus reverse the ground of rejection. The examiner’s decision is reversed. Reversed Appeal No. 2004-1566 Application 09/452,982 - 7 - BRADLEY R. GARRIS ) Administrative Patent Judge ) ) ) ) CHARLES F. WARREN ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) JEFFREY T. SMITH ) Administrative Patent Judge ) Appeal No. 2004-1566 Application 09/452,982 - 8 - Infineum USA LP Law Dept 1900 East Linden Ave PO Box 710 Linden, NJ 07036-0710 Copy with citationCopy as parenthetical citation