Ex Parte WAGER et al

Patent Trial and Appeal Board

Aug 11, 2016

13031972 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/031,972 02/22/2011 James WAGER
408 7590 08/15/2016
LUEDEKA NEELY GROUP, P,C,
P 0 BOX 1871
KNOXVILLE, TN 37901
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.
AC-2011-1 6001
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
docketing@luedeka.com
LNG.PA TENT@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES WAGER, DAVID P. CLEAVER, MATTHEW H.
LINDNER, JULIENNE M. GALANTE-FOX, SCOTT D.SCHWAB, and
JOHN BENNETT
Appeal2014-010007
Application 13/031,972
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-3, 5-10, 12-20, 22, 23, 28, and 29.
We have jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to fuel additives, fuels
containing the additives and methods for using the additives with fuel.
Claim 1 is illustrative and reproduced below:
1. A diesel fuel composition comprising:
a major amount of middle distillate fuel; and from about 400 to
about 1000 mg per Kg of fuel of a fuel additive comprising:
Appeal2014-010007
Application 13/031,972
(2) a reaction product of (a) a hydrocarbyl substituted
dicarboxylic acid or anhydride, and (b) an amine compound or
salt thereof of the formula
NR
~1
f..J Hz-- C ,.~~~+J H -.~~~~-N HR
.:_
wherein R is selected from the group consisting of hydrogen
and a hydrocarbyl group containing from about 1 to about 15
carbon atoms, and R 1 is selected from the group consisting of
hydrogen and a hydrocarbyl group containing from about
1 to about 20 carbon atoms and wherein the reaction product is
made at a temperature ranging from about 155° to about 200° C
at atmospheric pressure and contains at least one amino triazole
group;
(2) a hydrocarbyl succinimide dispersant;
(3) a C2 to C10 alkyl alcohol; and
( 4) a lubricity additive consisting essentially of one or more
fatty acids having from about 12 to about 24 carbon atoms in a
weight ratio of component (2) to component (4) in the fuel
ranging from about 0.5: l to about 1.5: l;
wherein the hydrocarbyl group of component (1) and (2) is
derived from a 500 to 1300 number average molecular weight
polyisobutenyl group and wherein a weight ratio of component
(1) to component (2) in the fuel ranges from about 1:3 to about
1:5.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Rollin et al.,
Brennan et al.,
Schield et al.,
Richardson
Malfer et al.,
Malfer et al.,
us 5,496,480
us 5,385,588
US 7,867,295 B2
US 2010/0107479 Al
US 2010/0037514 Al
US 8,623,105 B2
2
March 5, 1996
Jan.31, 1995
Jan. 11, 2011
May 6, 2010
Feb. 18,2010
Jan.07,2014
Appeal2014-010007
Application 13/031,972
Galante-Fox et al., US 8,529,643 B2 Sept. 10, 2013
The Examiner maintains the following grounds of rejection 1:
Claims 13-20 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1-21
of U.S. Patent No. 8,529,643 B2.
Claims 1-3, 5-10, 12-20, 22, 23, 28, and 29 stand rejected on the
ground of non-statutory obviousness-type double patenting as being
unpatentable over claims 1-30 of U.S. Patent No. 8,623,105.
Claims 1-3, 5-10, 12-20, 22, 23, 28, and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Rollin in view of Brennan
and Shield.
We summarily affirm the non-contested obviousness-type double
patenting rejections.
We reverse the rejection under 35 U.S.C. § 103(a).
In this regard, and concerning the latter rejection, 1A~ppellants argue,
inter alia, that the Examiner has failed to present a prima facie case of
obviousness because the Examiner has failed to establish that the applied
prior art would have taught or suggested using a reaction product
(component 1) and a particular succinimide dispersant (component 2), as
variously specified in the appealed independent claims, in a weight ratio as
required by the appealed claims (Br. 16-36).
1 We do not reach the Examiner's provisional rejections of claims 1-3, 5-10,
12-20, 22, 23, 28, and 29 on the ground of non-statutory obviousness-type
double patenting as being unpatentable over claims 1-31 of Application No.
12/119,778 and over claims 1-25 of Application No. 12/264801 because the
latter Applications currently enjoy abandoned status rendering these
rejections moot.
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Appeal2014-010007
Application 13/031,972
The Examiner has not particularly addressed the above-identified
argument in the Answer. Moreover, the Examiner has not made sufficient
findings in the statement of rejection in the Final Office Action or the
statement of rejection in the Answer to satisfactorily explain how the
Examiner believes that one of ordinary skill in the art would have been led
to arrive at the claimed subject matter as a whole, including a composition
having a relative amount of a particular component 1 and a particular
component 2, as required in any of the appealed claims, based on the applied
teachings of the references. For instance, Rollins' teaching with respect to
using "supplementary dispersants such as succinimide dispersants" is not
accompanied by a sufficient explanation by the Examiner articulating how
this applied teaching would have suggested employing a particular
succinimide dispersant having a particular hydrocarbyl group as specified in
claim 1 for the succinimide and in an amount relative to a component 1 as
required by claim 1 that would satisfy the claimed ratio of components 1 and
2 of the fuel composition of claim 1 (Rollins, col. 8, 11. 42-65; Ans. 4--5).
Nor has the Examiner explained how any of the other prior art
references make up for the deficiency in supplying an adequate teaching
and/ or suggestion that would have led an ordinarily skilled artisan to modify
the process of Rollin to include a particular succinimide dispersant that
satisfies the component 2 limitations, including using a relative amount
thereof, as required by any of the appealed claims.
In this regard, "rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness" being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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Appeal2014-010007
Application 13/031,972
2006) (quoted with approval in KSR Int'! Co. v. Telejlex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on§ 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
On this record, we reverse the Examiner's rejection of the appealed
claims under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner's decision to reject claims 13-20 on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1-21 of U.S. Patent No. 8,529,643 and to reject claims 1-3, 5-10,
12-20, 22, 23, 28, and 29 on the ground of non-statutory obviousness-type
double patenting as being unpatentable over claims 1-30 of U.S. Patent No.
8,623,105 is affirmed.
The Examiner's decision to reject claims 1-3, 5-10, 12-20, 22, 23,
28, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Rollin in
view of Brennan and Shield is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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