Ex Parte Selby et al

Patent Trial and Appeal Board

Apr 8, 2014

12373079 (P.T.A.B. Apr. 8, 2014)

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.
12/373,079 02/16/2009 Keith Selby TS7718 US 8058
23632 7590 04/08/2014
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
04/08/2014 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 KEITH SELBY, TREVOR STEPHENSON,
MARK PHILLIP WAKEM, and DAVID JOHN WEDLOCK
____________

Appeal 2012-008472
Application 12/373,079
Technology Center 1700
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge

DECISION ON APPEAL

The Appellants1 seek our review of a final rejection of claims 1-5, 7,
and 8. We have jurisdiction under 35 U.S.C. §§6(b) and 134(a).
We affirm.

1 The Appellants identify the Real Party in Interest as “Shell Oil Company.”
Appeal Brief filed December 6, 2011 (“Br.”) 2.
Appeal 2012-008472
Application 12/373,079

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BACKGROUND

The invention relates to a method of reducing nitrogen oxides
emissions (or reducing an increase of the formation of nitric and nitrous
acid) in a compression ignition internal combustion engine (i.e., a diesel
engine) by using a lubricant composition that comprises a combination of a
particular paraffinic base oil lubricant and a Fischer-Tropsch derived gas oil
as the fuel. Specification (“Spec.”) 2, ll. 28-30; 28, ll. 17-26; claims 1 and 7.
Representative claim 1 is reproduced below:
1. A process for the reduction of nitrogen oxide
emissions of compression ignition engines, comprising using a
paraffinic base oil in a lubricant in a compression ignition
engine wherein the paraffinic base oil comprises (i) a
continuous series of iso-paraffins having n, n+l, n+2, n+3 and
n+4 carbon atoms, wherein n is between 15 and 40 in
combination with a fuel comprising a Fischer-Tropsch derived
gas oil.
Br. 5 (Claims App’x) (italics added to show disputed claim
limitations).
The Examiner rejected claims 1-5, 7, and 8 as unpatentable under 35
U.S.C. §103(a) as unpatentable over Johnson,2 Hall,3 and Berlowitz.4
Examiner’s Answer entered March 21, 2011 (“Ans.”) 4-7.

2 US Patent 7,241,375 B2 issued July 10, 2007.
3 US Patent 7,825,076 B2 issued November 2, 2010.
4 US Patent 6,663,767 B1 issued December 16, 2003.
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Application 12/373,079

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DISCUSSION
The Appellants do not offer any argument in support of the separate
patentability of any particular claim. Br. 3-4. Therefore, we confine our
discussion to claim 1, which we select as representative pursuant to 37
C.F.R. § 41.37(c)(1)(vii). Claims 2-5, 7, and 8 stand or fall with claim 1.
With respect to claim 1, the Examiner found that: (i) Hall discloses
that using a lubricating oil having a low sulfur content in combination with a
low sulfur content fuel in a diesel engine reduces particulate emissions from
the engine, such as nitrogen oxide particulates; (ii) Johnson teaches using a
heavy, paraffinic/iso-paraffinic base oil (with low sulfur content) as a
lubricant in, for example, heavy machinery applications; and (iii) Berlowitz
teaches that adding a Fischer-Tropsch derived diesel fuel to a conventional
diesel fuel provides a blended fuel demonstrating better than expected
reductions in emissions and sulfur content. Ans. 4-6. Based on the
collective teachings of these applied prior art references, the Examiner
concluded that a person of ordinary skill in the art would have been
motivated to use Johnson’s low sulfur content, heavy paraffinic/iso-
paraffinic lubricating oil as Hall’s lubricating oil with low sulfur content. Id.
at 6. In addition, based on Berlowitz’s teaching that Fischer-Tropsch
derived diesel fuel additive reduces sulfur content and emissions, the
Examiner further concluded that “it would have been obvious to have used
the relatively pure, premium quality, heavy hydrocarbon [paraffinic/iso-
paraffinic] lubricating oils disclosed in Johnson, in combination with a fuel
composition comprising a Fischer-Tropsch derived gas oil as disclosed in
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Application 12/373,079

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Berlowitz, and to have expected reduced emissions as disclosed by Hall.”
Id.
The Appellants contend that the Examiner “took the position that the
heavy paraffinic base oils of Johnson may be used as engine lubricants in
compression ignition engines but provided no basis for this opinion.” Br. at
3 (italics added.) The Appellants also argue that the cited references neither
teach nor suggest a process for reducing nitrogen oxide emissions in a diesel
engine “by using a paraffinic base oil lubricant with specific characteristics
in combination with a Fischer-Tropsch derived gas oil.” Id. at 3 and 4.
We do not find the Appellants’ arguments persuasive to justify a
reversal of the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
reversible error because it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections).
The Appellants do not dispute the Examiner’s finding, Ans. 4-5
(citing Johnson’s col. 1, ll. 19-35; col. 4, ll. 37-45; col. 5, ll. 35-42; col. 6, ll.
15-31), that Johnson teaches the suitability of a paraffinic/iso-paraffinic base
lubricating oil falling within the scope of appealed claim 1 as a lubricant in
various applications, for example, heavy machine oil applications. Br. 3-4.
Nor do the Appellants contest the Examiner’s finding, Ans. 6 (citing Hall’s
Abst.; col. 1, ll. 14-19), that Hall discloses the use of any low sulfur content
lubricating oil and that Johnson’s paraffinic/iso-paraffinic base lubricating
oil is in fact a low sulfur content lubricating oil that would be suitable as the
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Application 12/373,079

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low sulfur content lubricating oil in Hall’s diesel engine fuel composition.
Thus, although Johnson does not explicitly teach the use of the
paraffinic/iso-paraffinic base lubricating oil as a component for diesel engine
fuel, the collective teachings of Johnson and Hall would have provided a
reasonable expectation of success to one of ordinary skill in the art to use
Johnson’s heavy, paraffinic/iso-paraffinic base lubricating oil as the low
sulfur content lubricant in Hall’s diesel engine fuel. Ans. 6. Therefore, we
do not find any prejudicial error in the Examiner’s analysis.
Moreover, we further disagree with the Appellants’ argument that the
cited references do not suggest a process for reducing nitrogen oxide
emissions in a diesel engine by using Johnson’s relatively pure, heavy
hydrocarbon lubricant oil in combination with Berlowitz’s Fischer-Tropsch
derived gas oil fuel. Br. 3-4. The Examiner specifically found that Hall
teaches the combination of low sulfur content lubricating oil and low sulfur
fuel results in a reduction of particulate (e.g., nitrogen oxides) emissions in
diesel engines (equipped with particulate traps). Ans. 6. The Examiner
further found that Berlowitz’s examples teach that the use of a Fischer-
Tropsch derived fuel lowers emissions, including nitrogen oxides. Id.
These specific findings refute the Appellants’ contention that the collective
teachings of the prior art references do not suggest a process for reducing
nitrogen oxide emissions in a diesel engine by using Johnson’s relatively
pure, heavy hydrocarbon lubricant oil in combination with Berlowitz’s
Fischer-Tropsch derived gas oil fuel. The Appellants do not explain why
these specific findings by the Examiner constitute reversible error.
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Application 12/373,079

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For these reasons, we uphold the Examiner’s rejection.

SUMMARY

The Examiner’s rejection under 35 U.S.C. §103(a) of claims 1-5, 7,
and 8 as unpatentable over Johnson, Hall and Berlowitz 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).

AFFIRMED

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