Ex Parte Schwahn et alDownload PDFPatent Trials and Appeals BoardMay 15, 201910551239 - (D) (P.T.A.B. May. 15, 2019) Copy Citation 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. 10/551,239 09/28/2005 Harald Schwahn 278349US0PCT 4258 22850 7590 05/17/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER HINES, LATOSHAD ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 05/17/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket @ oblon. com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARALD SCHWAHN, DIETMAR POSSELT, and ERICH K. FEHR Appeal 2018-006983 Application 10/551,239 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 48—50, 52—55, 57—61, 66, 67, and 72—76 under 35 U.S.C. § 103(a) as unpatentable over Rifkin2 in view of Kovacs3 and Schwahn.4 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.5 1 Appellants identify BASF SE as the real party in interest (Appeal Br. 2). 2 Rifkin et al., US 4,398,921, issued Aug. 16, 1983 (“Rifkin”). 3 Kovacs et al., US 4,444,166, issued Apr. 24, 1984 (“Kovacs”). 4 Schwahn et al., US 2003/0140552 Al; published July 31, 2003 (“Schwahn”). 5 Our Decision refers to the Specification (“Spec.”) filed Sept. 28, 2005, Appellant’s Appeal Brief (“Appeal Br.”) filed Dec. 18, 2018, the Examiner’s Appeal 2018-006983 Application 10/551,239 STATEMENT OF THE CASE The invention relates to a method for reducing deposits in an indirectly fuel injecting gasoline engine. Claim 48, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitation at issue is italicized. 48. A process of reducing deposits in an indirectly fuel injecting gasoline engine, the process comprising: operating an indirectly fuel injecting gasoline engine with a gasoline fuel composition having a maximum sulfur content of 150 ppm by weight comprising ethanol and an additive having detergent action; wherein said additive has at least one hydrophobic hydrocarbon radical having a number average molecular weight of from 85 to 20,000 and is selected from the group consisting of a polyisobutenamine, a polyetheramine, a product obtained by Mannich conversion of a substituted phenol with an aldehyde and an amine, and combinations thereof, wherein the gasoline fuel composition does not comprise an additive comprising a succinic anhydride moiety or a succinimide derivative thereof, wherein the additive and the ethanol reduce total combustion chamber deposits and/or the intake valve deposits of the gasoline engine, and wherein the ethanol is present in an amount of from 10—75% by volume of the total volume of the gasoline fuel, ethanol, and additive; and wherein said additive having detergent action is present in a proportion of 10 to 1,000 ppm by weight. Answer (“Ans.”) dated Apr. 30, 2018, and Appellant’s Reply Brief (“Reply Br.”) filed June 27, 2018. 2 Appeal 2018-006983 Application 10/551,239 ANALYSIS We address claims separately from representative claim 48 only to the extent that they have been argued separately pursuant to 37 C.F.R. § 41.37(c)(l)(iv) (2017). Claim 48 The Examiner finds that Rifkin discloses a process for reducing deposits in a gasoline engine comprising operating the engine using a fuel including 70—95 vol.% gasoline, 5—30 vol.% ethanol, and 1—100 ppm of an additive. Ans. 2. The Examiner further finds that Rifkin’s fuel additive comprises a Mannich conversion product of an alkylphenol with an aliphatic hydrocarbon radical having an average molecular weight of about 400-1500, an aldehyde, and an amine. Id. at 3. Because Rifkin does not mention a succinic anhydride moiety or a succinimide derivative, the Examiner finds that Rifkin’s additive does not include such compounds. Id. The Examiner acknowledges that Rifkin fails to teach that the gasoline engine uses indirect fuel injection, but finds Kovacs teaches an indirectly fuel injecting gasoline engine including a spark plug for initial engine operation. Ans. 3. The Examiner concludes that it would have been obvious to operate the Kovacs engine with Rifkin’s fuel composition in order to reduce or prevent the formation of engine deposits. Id. at 4. The Examiner also acknowledges that Rifkin fails to teach that the fuel composition has a maximum sulfur content of 150 ppm by weight, but finds Schwahn discloses gasoline fuel for use in fuel injection gasoline engines having a sulfur content of not more than 150 ppm. Ans. 4. The Examiner concludes that it would have been obvious to have used the low 3 Appeal 2018-006983 Application 10/551,239 sulfur gasoline of Schwahn in Rifkin’s fuel composition in order to further decrease engine deposits. Id. Appellants argue that Rifkin relates to a completely different type of deposit control because Rifkin is directed to carbureted engines rather than indirectly fuel injected engines. Appeal Br. 11. Specifically, Appellants contend that Rifkin is focused on the problem with deposits in the throttle body area of the carburetor, not on the problem with deposits in an indirectly fuel injection engine. Id. at 11—12. Appellants assert that the particular deposits formed in an indirectly fuel injection engine are different from those produced in a carbureted engine such as Rifkin’s. Id. at 12—13. As such, Appellants urge that the ordinary artisan would not have been motivated to apply the claimed additive in an indirectly fuel injecting gasoline engine with a reasonable expectation of success. Id. at 13. Appellants’ arguments are not persuasive of reversible error. Appellants fail to direct our attention to any evidentiary support for the asserted difference in deposits that would be formed in carbureted versus fuel injection engines. Nor do Appellants dispute the fact that the ordinary artisan would have expected a deposition problem for both types of engines. To the contrary, Appellants merely argue that the location of the deposits would be expected to be different for these two engine types. Moreover, the Examiner finds that it is the gasoline fuel composition, and specifically, the detergent additive that reduces the deposits within the engine, and not the engine per se. Ans. 10. Also, the Examiner relies on Kovacs, not Rifkin, as teaching that indirectly fuel injecting gasoline engines were well known in the art. 4 Appeal 2018-006983 Application 10/551,239 Appellants next argue that Kovacs is not directed to “an indirectly fuel injecting spark ignition gasoline engine.” Appeal Br. 14—15. Further, Appellants contend that there is no reason why the ordinary artisan would have combined Rifkin and Kovacs with a reasonable expectation of success, especially in view of Rifkin’s teaching that deposit formation is affected by the type of engine and engine operating conditions as well as Rifkin’s focus on deposit formation in the throttle body area of carbureted engines. Id. at 15. In addition, Appellants urge that Kovacs is not the least bit concerned with additives or detergents, but instead is concerned with auto ignition of fuels at relatively low compression ratios. Id. As such, Appellants contend that Kovacs is non-analogous prior art. Id. at 16. Appellants also contend the Examiner has construed Appellants’ “field of endeavor so broadly as to render it meaningless.” Id. These arguments are also not persuasive of reversible error. We first note that claim 48 does not require that the gasoline engine include spark ignition. Second, Kovacs is clearly directed to methods of combusting fuel, including gasoline and alcohol, in an engine that may use indirect fuel injection. Thus, Kovacs is clearly directed to the same field of endeavor as Appellants—method of operating indirectly fuel injecting gasoline engines. A reference is analogous art if it is either in the field of the applicant’s endeavor, or is reasonably pertinent to the particular problem with which the inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Likewise, Rifkin is reasonably pertinent to the particular problem with which Appellants were concerned—deposit formation on intake and combustion chamber components. 5 Appeal 2018-006983 Application 10/551,239 Third, although Rifkin discusses deposit formation in the context of carbureted engines and, particularly, within the throttle body area, there is no reason to expect that deposit formation is limited to the throttle body area, or is limited to carbureted engines. Instead, Rifkin’s disclosure suggests that a deposition problem exists for engines using gasoline and alcohol fuel mixtures. Fourth, although Kovacs is not concerned with the use of detergent additives, the Examiner does not rely on Kovacs for such a teaching. As indicated above, the Examiner relies on Kovacs as teaching that indirectly fuel injecting gasoline engines were well known in the art. Appellants do not dispute this finding. Appellants do not separately argue dependent claims 49, 50, 52—54, 57—61, 66, 67, 72, and 73. Therefore, we sustain the Examiner’s obviousness rejection of claim 48—50, 52—54, 57—61, 66, 67, 72, and 73. Claims 55 and 766 Claim 55 indirectly depends from claim 48 and further requires that the additive is the Mannich conversion product of the substituted phenol with the aldehyde and the amine, wherein the additive is present in an amount of 250 ppm. Claim 76 depends from claim 48 and similarly requires that the additive is the Mannich conversion product and is present in an amount of 250-1000 ppm. 6 Claims 55 and 76 recite “phenyl,” rather than “phenol” as recited in claim 48. This difference appears to be a typographical error that, upon further prosecution, should be addressed by the Examiner. 6 Appeal 2018-006983 Application 10/551,239 The Examiner finds Rifkin teaches that the detergent additive includes the Mannich conversion product in an amount of about 100 ppm. Ans. 6. The Examiner acknowledges that Rifkin fails to teach the Mannich conversion product is present in an amount of 250-1000 ppm. Id. at 7. However, the Examiner finds that “Rifkin teaches effective amounts of the multi-component compositions are blended depend[ing] upon the quantities added to the hydrocarbon fuels.” Id. Therefore, the Examiner concludes that it would have been obvious to vary the detergent amount to achieve the desired result. Id. (citing In re Boesch, 617 F.2d 272 (CCPA 1980)). Appellants argue that Rifkin limits the amount of additive to about 100 ppm, teaches that the ordinary artisan would recognize that blending additive components to be used in gasoline compositions is very difficult, and that the additive should be effective in very small quantities to avoid adverse effects and minimize costs. Appeal Br. 18—19. Appellants further note that Rifkin’s additive includes only about 20 to about 40 wt.% of the Mannich conversion product, thus reducing the upper limit for the amount of Mannich conversion product to about 20-40 ppm. Id. at 19—21. Appellants contend that it would not have been obvious to vary Rifkin’s Mannich conversion product outside the range taught therein, which is at most 40 ppm. Id. at 21—23 (citing In re Sebek, 465 F.2d 904, 907 (CCPA 1972)). Appellants’ arguments regarding claims 55 and 76 are persuasive of reversible error. Appellants correctly note that Rifkin’s upper limit for the additive is about 100 ppm and also that only about 20-40 wt.% of the additive is the Mannich conversion product (resulting in an upper limit for the conversion product of 20-40 ppm). Rifkin 2:35—3:23 and 13:20—21. Further, Appellants correctly note that Rifkin provides reasons for limiting 7 Appeal 2018-006983 Application 10/551,239 the amount of additive. The Examiner fails to explain why the ordinary artisan, armed with Rifkin’s teachings, would have varied the amount of additive significantly above the disclosed upper limit so as to obtain amounts of the Mannich conversion product of 250—1000 ppm with a reasonable expectation of success. Accordingly, we do not sustain the Examiner’s obviousness rejection of claims 55 and 76. Claim 74 Claim 74 depends from claim 48 and further requires that the total combustion chamber deposits are determined according to CEC F-20-A-98 and intake valve deposits are determined according to CEC F-05-A-93. The Examiner acknowledges that Rifkin fails to disclose use of the above testing methods, but finds Schwahn discloses additives used in carbureted and fuel injection engines for decreasing deposits. Ans. 8. The Examiner also finds Schwahn teaches using the claimed test methods. Id. Appellants repeat the limitations of this claim, note that the recited test methods are based on the Mercedes Benz M102E engine, and cite to the Mercedes Benz 230 E Product Description, the CEC Code for the F-05-93 test, and the test engine diagram of the Mercedes Benz Ml 02.982 engine for CEC F-05-93. Appeal Br. 17—18. However, Appellants’unexplained argument provides no basis to reject the Examiner’s findings and reasoning with regard to claim 74. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Holding that “the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal 8 Appeal 2018-006983 Application 10/551,239 brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); and Keller, 642 F.2d at 426. Accordingly, we sustain the Examiner’s obviousness rejection of claim 74. Claim 75 Claim 75 depends from claim 48 and further requires that the indirectly fuel injecting gasoline engine be an indirectly fuel injecting spark ignition gasoline engine. The Examiner finds that Kovacs teaches that the engine can be an indirectly fuel injecting spark ignition gasoline engine because the engine can have a spark plug for use during initial engine operation. Ans. 3. Appellants argue that “Kovacs does not encompass engines operating according to the spark ignition principle.” Appeal Br. 16. Instead, Appellants contend that Kovacs’ engine operates according to the compression or auto-ignition principle. Id. at 17. Appellants’ argument is not persuasive of reversible error because it fails to address the Examiner’s finding that Kovacs teaches use of a spark plug for use during initial engine operation and, therefore, teaches an indirectly fuel injecting engine that includes spark ignition. Claim 75 does not require that the engine operate exclusively using spark ignition, as Appellants’ argument appears to presume. Accordingly, we sustain the Examiner’s obviousness rejection of claim 75. 9 Appeal 2018-006983 Application 10/551,239 DECISION Upon consideration of the record, and for the reasons given above and in the Examiner’s Answer, the decision of the Examiner rejecting claims 48— 50, 52—54, 57—61, 66, 67, and 72—75 is affirmed. However, for the reasons given above and as argued in the Appeal and Reply Briefs, the decision of the Examiner rejecting claims 55 and 76 is reversed. 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). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation