12373490 (P.T.A.B. Sep. 25, 2014)

Ex Parte Selby et al

Patent Trial and Appeal BoardSep 25, 2014

12373490 (P.T.A.B. Sep. 25, 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. 12/373,490 01/12/2009 Keith Selby TS7677 US 1759 23632 7590 09/25/2014 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER WEISS, PAMELA HL ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 09/25/2014 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 PHILIP WAKEM, and DAVID JOHN WEDLOCK ____________ Appeal 2012-011698 Application 12/373,490 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-8. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A combined lubricant and fuel composition package for operating a diesel engine, wherein the lubricant comprises a base oil comprising (i) a continuous series of iso-paraffins having n, n+l, n+2, n+3 and n+4 carbon atoms, and/or (ii) a continuous series of iso-paraffins having n, n+2 and n+4 carbon atoms and not containing n+l, and n+3; wherein n is between 15 and 40 for the base oil; and wherein the fuel composition comprises a paraffinic Appeal 2012-011698 Application 12/373,490 2 gas oil component having a paraffin content of greater than 80 wt% paraffins and a saturates content of greater than 98 wt%. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Myburgh et al. US 2005/0154240 A1 July 14, 2005 (hereafter “Myburgh”) Hall WO 2004046283A1 June 3, 2004 Johnson WO 2004033607A1 April 22, 2004 THE REJECTION Claims 1-8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hall in view of Myburgh and Johnson. ANALYSIS We refer to the Examiner’s statement of the rejection made on pages 5-9 of the Answer and incorporate the stated position and findings as our own. Appellants argue that Hall does not disclose a lube oil comprising a series of isoparaffins and a fuel that is a paraffinic gas oil having the characteristics set forth in claim 1. However, as pointed out by the Examiner on pages 9-10 of the Answer, the Examiner cited secondary references to teach these aspects of the claim, and we note that Appellants do not dispute the Examiner’s findings regarding the teachings of the secondary references. Br. 3. We thus agree with the Examiner that Appeal 2012-011698 Application 12/373,490 3 Appellants’ arguments against the references individually are unconvincing. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck& Co., 800 F.2d 1091, 1097- 98 (Fed. Cir. 1986). Appellants then argue that the claimed subject matter is directed to a combined lubricant and fuel composition package for operating a diesel engine, and that claim 1 is directed to a lubricant comprising a base oil comprising a continuous series of isoparaffins with defined characteristics, and a fuel composition comprising a paraffinic gas oil having defined characteristics. Br. 3. Appellants submit that, as set forth on page 35 of the Specification, this combination of the paraffinic base oil in the lubricant, together with a paraffinic fuel, achieves an unexpectedly synergistic, and non-linear large reduction of the nitrogen oxide emission per unit of carbon dioxide formed as compared to a paraffinic base oil and lubricant combined with the mineral oil derived fuel or to a combination of a mineral derived base oil in a combination with a paraffinic Fischer-Tropsch derived automotive gas oil. Appellants submit that therefore the claimed subject matter is unobvious. Br. 3. Appellants can rebut a prima facie case of obviousness by showing “unexpected results,” i.e., showing that the claimed invention possesses a superior property or advantage that a person of ordinary skill in the art would have found surprising or unexpected. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.1997) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However, the burden rests with Appellants to establish, inter alia, (1) Appeal 2012-011698 Application 12/373,490 4 that the comparisons are to the disclosure of the closest prior art, and (2) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). On this record, we concur with the Examiner for the reasons stated in the Answer on pages 10-13, that Appellants have not successfully made such showing. We agree with the Examiner that the Specification does not include any meaningful comparison (i.e., side-by-side experimental evidence) between the claimed invention and the closest prior art, holding all variables constant except for the novel features of the claimed invention. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[R]esults must be shown to be unexpected compared with the closest prior art.”) Also, we agree with the Examiner that the showing is not commensurate in scope with the claims. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, we note that Appellants must demonstrate that the different result would not have been expected by one of ordinary skill in the art at the time of the Appellants’ invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). In view of the above, we are not persuaded by Appellants’ arguments and rebuttal evidence, and affirm the rejection. Appeal 2012-011698 Application 12/373,490 5 CONCLUSIONS OF LAW AND DECISION The rejection 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 cdc