Ex Parte Tran et alDownload PDFPatent Trial and Appeal BoardJul 14, 201611524815 (P.T.A.B. Jul. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111524,815 09/21/2006 BoL. Tran 49459 7590 07118/2016 NALCO COMPANY 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 7981 8077 EXAMINER 655 Lone Oak Drive OLADAPO, TAIWO Eagan, MN 55121 ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 07/18/2016 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): connie.scheff@ecolab.com sarah.dannecker@ecolab.com ecolab_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BO L. TRAN, JOSEPH M. HAMNIK, and STEPHEN J. BLUBAUGH 1 Appeal2014-008001 Application 11/524,815 Technology Center 1700 Before JAMES C. HOUSEL, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's maintained rejection of claims 11, 14-16, 18-22, 24, 25, and 27-29 under 35 U.S.C. § 112, first paragraph as lacking written description. 2 We have jurisdiction pursuant to 35 U.S.C. § 6. We REVERSE. 1 Appellants identify Nalco Company as the real party in interest. Appeal Brief filed March 2, 2014 ("App. Br."), 2. 2 Appellants also request a ruling as to prior art previously cited during prosecution and various petitionable matters. Reply Brief filed July 21, 2014 ("Reply Br."), 13-14. Appeal2014-008001 Application 11/524,815 Appellants' claimed invention is directed to methods of operating equipment using a fluid to control force and movement, wherein the fluid comprises a glycerin-containing by-product. Spec. Abstract, Claims 11, 27, 28. The hydraulic fluid comprises about 40 to about 99 weight percent of glycerin. Spec. 2, 11. 4-5. The independent claims require that "the majority of the fluid ... is the by-product" (claims 11, 27, 28) and that the fluid comprises either "90 to 99 percent glycerin" (claims 11, 27) or "90 to 95 percent glycerin" (claim 28). Independent claims 11 and 27 also require that the by-product comprises 0.01 to less than 0.5% methanol. Independent claim 11 reproduced below with emphasis is illustrative: 11. A method of operating equipment in which a fluid is used to transmit energy to control force and movement in the equipment, comprising the step of introducing into a hydraulic system a fluid comprising a glycerin-containing by-product from a biodiesel manufacturing process or transesterification reactions involving triglycerides wherein-the majority of the fluid used to transmit the energy is the by-product and the fluid used to transmit the energy has a wear characteristic of less than 1 mm scar diameter maximum wherein the fluid comprises 90 to 99 percent glycerin, the by-product further comprises 0.01 to less than 2%, inorganic salts, 0.01 to less than 0.5% methanol, and mong. App. Br. (Claims Appendix) 9. 2 Appeal2014-008001 Application 11/524,815 DISCUSSION3 On the record before us, we are persuaded that the Examiner erred in finding there is a lack of written description as to the majority of the hydraulic fluid being by-product, as to the recited amount of glycerin, and as to the amount of methanol in the by-product. "It has long been the case that a patentee 'can lawfully claim only what he has invented and described, and if he claims more his patent is void."' Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (citing O'Reilly v. Morse, 56 U.S. (15 How.) 62, 121 (1853)). To satisfy the written description requirement, "the applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the claimed invention." Carnegie Mellon University, 541 F.3d at 1122 (internal quotations omitted). Our reviewing court has "repeatedly stated that actual 'possession' or reduction to practice outside of the specification is not enough. Rather, ... it is the specification itself that must demonstrate possession." Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane). A "description that merely renders the invention obvious does not satisfy the requirement." Id. (citing Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). It is also not enough that the claims are enabled; "requiring a written description of the invention ... curtail[ s] claims that do not require undue experimentation to make and use, and thus 3 We refer to the Final Office Action mailed October 1, 2013 ("Final Act."), the Appeal Brief filed March 2, 2014, the Examiner's Answer mailed May 19, 2014 ("Ans."), and the Reply Brief filed July 21, 2014. 3 Appeal2014-008001 Application 11/524,815 satisfy enablement, but that have not been invented, and thus cannot be described." Ariad Pharmaceuticals, Inc., 598 F.3d at 1352. We note that Appellants claiming a narrower range within the broader range disclosed in the Specification as originally filed does not generally violate the written description requirement unless, on the facts, the examiner "has presented sufficient reason to doubt that the broader described range also describes the somewhat narrower claimed range." In re Wertheim, 541 F .2d 257, 264 (CCP A 197 6). The Examiner can meet the burden"[ w ]here it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range." Wertheim, 541 F.2d at 265. As to the recited amounts of by-product and glycerin, the Examiner finds that the Specification does not recite the amount of by-product in the hydraulic fluid and that the disclosure as to the amount of glycerol in the by- product is limited to 40 to 90 weight percent. Based on these determinations, the Examiner finds there is a lack of written description for the majority of the hydraulic fluid being by-product and the hydraulic fluid including glycerin at either 90 to 99 weight percent or 90 to 95 weight percent. Ans. 4-5. The Examiner reasons that where the amount of glycerol in the by-product is no greater than 90 weight percent, it is impossible to attain a hydraulic fluid including glycerin at 95 weight percent or greater. In doing so, the Examiner discounts the disclosure that the hydraulic fluid comprises about 40 to about 99 weight percent of glycerin as support for glycerin in the by-product in amounts greater than 90 weight percent because the Specification does not bar including glycerin in addition to that contributed by the by-product. 4 Appeal2014-008001 Application 11/524,815 On this record, we find there is sufficient written description for both the recited amounts of by-product and of glycerin. The Specification describes preparing hydraulic fluids by "adding any desired functional additives and optionally diluting [the glycerin by-products] to the desired glycerin concentration." Spec. 4, 11. 12-14. As the addition of functional additives and dilution of the glycerin by-products are optional, this disclosure constitutes sufficient written description of hydraulic fluid where a majority of the fluid is by-product. As to the amounts of glycerin, the Specification describes refining the glycerin by-product as necessary prior to use, including the use of distillation to adjust the glycerin concentration and/or remove impurities (Spec. 4, 11. 16-18) and that the amount of glycerin in the hydraulic fluid is "about 40 to about 99 weight percent of glycerin" (Spec. 2, 11. 4-5). While the Specification explicitly discloses addition of other materials, additives, diluents, and various diols, the disclosure of included glycerin is limited to that arising from the by-product. See generally, Spec. Critically, we further find that the disclosure that distillation can be used to adjust the glycerin concentration and/or remove impurities as necessary prior to use reasonably conveys the process of concentrating and/or purifying the glycerol present in the by-product to the concentrations necessary to provide glycerin in the hydraulic fluid in amounts from about 90 to about 99 weight percent. 4 4 On this record, the Examiner fails to explain or provide any basis for why distillation to remove impurities would not reasonably convey to those skilled in the art providing pure glycerol or why such purified glycerol would not properly be considered a glycerol by-product. 5 Appeal2014-008001 Application 11/524,815 The Examiner finds that the Specification lacks written description for the by-product including the recited amount of methanol. Ans. 5. The Examiner finds that while the Specification discloses methyl esters and methanol in combination present in amounts of about 0.01 to about 5%, the disclosure is insufficient to support methanol in amounts at the upper limit of the claimed range----0.5%. Ans. 5, 6-7. Further reasoning that there is no disclosed ratio of methyl esters to methanol, the Examiner also determines that there is a lack of sufficient support for methanol at an amount of about 0.01 %. Ans. 6-7. Appellants argue that because the Specification describes that the by- product comprises 0.01 % to 5% by weight methanol and methyl esters (Spec. 4, 11. 6-7) and further describes an embodiment in which the by- product includes methanol and excludes methyl esters (original claim 16), it follows that there is sufficient written description for methanol alone in amounts up to 0.5% (App. Br. 5-7; Reply Br. 9-13). Appellants' position is grounded on broader ranges reasonably conveying possession of narrower ranges and on the Specification reasonably conveying inclusion of methanol in amounts up to at least 0.5%. On this record, we determine that the Examiner has failed to meet the burden to establish that there is not sufficient support for the claimed range of methanol. In particular, the Examiner has failed to establish that the Specification does not constitute sufficient disclosure of methanol in amounts of about 0.01 % to greater than 0.5% and has failed to present sufficient reason to doubt that the disclosed broader range does not also describe the narrower, claimed range of about 0.01 % to 0.5%. Critically, the Examiner's position fails to explain why the disclosure that "[ m ]ethyl esters 6 Appeal2014-008001 Application 11/524,815 and methanol are typically present in an amount of about 0.01 to about 5 percent" (Spec. 4, 11. 6-7) does not constitute sufficient disclosure of methanol in amount of about 0.01 to 0.5%, particularly in light of the disclosed process for forming biodiesel (Spec. 3, 1. 17 to 4, 1. 5). The Specification sets forth that "the oils and fats can be filtered and preprocessed to remove water and contaminants ... [and then] be mixed with an alcohol and a catalyst" (Spec. 3, 11. 17-20) where methanol is set forth as an exemplary alcohol (Spec. 3, 1. 22) that functions not only as a reactant, but also as a solvent for the typically-used sodium hydroxide or potassium hydroxide base catalysts (Spec. 3, 11. 21-22). The Specification also sets forth that the biodiesel manufacturing process-a catalyzed transesterification-is only complete when the triglycerides have been converted to fatty acid alkyl esters and glycerol. Spec. 3, 11. 27-29. The Specification further discloses that remaining methanol separates to the glycerin by-product phase. Spec. 3, 11. 30-31; 4, 1. 3. Under these circumstances, particularly where methanol is disclosed both as reactant and as solvent for catalysts and as separating to the by- product phase, we are of the opinion the Examiner has failed to establish that the Specification as a whole would not have reasonably conveyed possession of by-product including methanol in amounts of about 0.01 to 0.5%. For the reasons set forth above, it follows that we cannot sustain the Examiner's rejection of the claims for lack of compliance with the written description requirement. Appellants request that we rule as a matter of res judicata that earlier- cited prior art does not anticipate the claims nor render them unpatentable for obviousness. App. Br. 7; Reply Br. 13 (citing MPEP § 707.07(±)). 7 Appeal2014-008001 Application 11/524,815 We decline to reach the issue or to offer such an opinion. No claim currently stands rejected over prior art. Final Act.; Non-Final Office Action mailed June 4, 2013. It follows that any prior or potential rejection of claims over prior art is, therefore, not properly before us as appeal is taken from the decision of the Examiner rejecting the claims. 37 C.F.R. § 41.31 (a), (c). It further follows, therefore, that no inference should be drawn from our decision here as to the propriety of any previously pending, but withdrawn, or future prior art rejection. To the extent Appellants are contesting the conduct of examination-including any failure to provide reasons why an earlier prior art rejection was withdrawn-the matter is not before us as the conduct of examination is a petitionable, not an appealable, matter. 37 C.F.R. § 1.181. CONCLUSION The Examiner's rejection of claims 11, 14-16, 18-22, 24, 25, and 27- 29 under 35 U.S.C. § 112, first paragraph is REVERSED. REVERSED 8 Copy with citationCopy as parenthetical citation