Ex Parte Peiffer et al

Board of Patent Appeals and Interferences

Aug 16, 2004

09452982 (B.P.A.I. Aug. 16, 2004)

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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today was not written for publication and is not binding
precedent of the Board.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
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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
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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
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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
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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
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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
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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
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