Ex Parte Wollenberg

Board of Patent Appeals and Interferences

Mar 2, 2010

10779419 - (D) (B.P.A.I. Mar. 2, 2010)

1

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT H. WOLLENBERG
__________

Appeal 2009-013348
Application 10/779,419
Technology Center 1600
__________

Decided: March 2, 2010
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a high
throughput method for screening fuel additive composition samples. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

Appeal 2009-013348
Application 10/779,419

Statement of the Case
Background
“Presently, research in the fuel industry involves individually forming
candidate fuel compositions and then performing a macro-scale analysis of
the candidate compositions by employing a large amount of the candidate to
be tested” (Spec. 1, ll. 17-19). According to the Specification, “there exists
a need in the art for a more efficient, economical and systematic approach
for the preparation of fuel compositions and screening of such
compositions” (Spec. 2, ll. 2-4).
The Specification teaches “a high throughput preparation and
screening of a vast number of diverse compositions can be achieved to
identify which additives and/or compositions have reduced deposit
formation tendencies” (Spec. 3, ll. 3-5).
The Claims
Claims 1-17, 62, and 63 are on appeal. Claims 1 and 16 are
representative and read as follows:
1. A high throughput method for screening fuel additive
composition samples, under program control, comprising:
(a) providing a plurality of different fuel additive
composition samples, each sample comprising at least one
fuel additive;
(b) measuring the deposit formation of each sample to
provide deposit formation data results for each sample; and,
(c) outputting the results of step (b).

16. The method of claim 1, further comprising the step of
using the results of step (b) as a basis for obtaining a result
of further calculations.

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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Cherpeck ‘315 US 5,306,315 Apr. 26, 1994
Cherpeck ‘178 US 5,399,178 Mar. 21, 1995
Burow et al. US 2002/0090320 A1 Jul. 11, 2002
Luttermann et al. US 6,713,264 B2 Mar. 30, 2004

Heneghan et al., Studies of Jet Fuel Thermal Stability in a Flowing
System, 115 TRANSACTIONS OF THE ASME 480-485 (1993).

The issues

A. The Examiner rejected claim 16 under 35 U.S.C. § 112, second
paragraph as indefinite (Ans. 3).
B. The Examiner rejected claims 1, 2, and 8 under 35 U.S.C. § 102(b) as
anticipated by Heneghan (Ans. 3).
C. The Examiner rejected claims 1-6 and 8-11 under 35 U.S.C. § 102(b)
as anticipated by Cherpeck ‘178 (Ans. 3-4).
D. The Examiner rejected claims 1-11 under 35 U.S.C. § 102(b) as
anticipated by Cherpeck ‘315 (Ans. 4)1.
E. The Examiner rejected claims 1-6, 8-13, 15, and 17 under 35 U.S.C.
§ 103(a) as obvious over Cherpeck ‘178 and Burow (Ans. 4-6).
F. The Examiner rejected claims 1-11, 62, and 63 under 35 U.S.C.

1 We note that Appellants identify only claims 1-6 and 8-11 as rejected
under this ground, but the Examiner has rejected claims 1-11 over Cherpeck
‘315 in both the Final Rejection and Examiner’s Answer. Since Appellants
do not separately argue claim 7, we select claim 1 for analysis. See 37
C.F.R. § 41.37(c)(1)(vii)(2006).
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§ 103(a) as obvious over Cherpeck ‘315 (Ans. 6-7).
G. The Examiner rejected claims 1-6, 8-15, and 17 under 35 U.S.C.
§ 103(a)2 as obvious over Cherpeck ‘178, Burow, and Luttermann (Ans. 7-
8).
A. 35 U.S.C. § 112, second paragraph
The Examiner finds that “claim 16 has no positive, active steps (i.e.,
“using the results of step (b) as a basis for obtaining a result of further
calculations), and the term ‘basis’ is confusing because it is not clear if this
term is intended to provide any method steps” (Ans. 3).
Appellant argues that the “specification further sets forth on page 6,
lines 9 and 10 that this information, i.e., the results of step (b), may also
allow for calculating necessary changes of the additives and fuels at the least
cost” (App. Br. 5). Appellant argues that this “clearly sets forth that the
results of step (b) can be used as a basis in determining whether any changes
in the additives and/or fuel used in the compositions needs to be adjusted in
order to find the leading fuel compositions” (App. Br. 5).
In view of these conflicting positions, we frame the indefiniteness
issue before us as follows:
Has Appellant demonstrated that the Examiner erred in concluding
that the phrase “using the results of step (b) as a basis for obtaining a result
of further calculations” is indefinite? (Ans. 3).

2 While claim 14 is listed in the heading, the Examiner did not list claim 14
in the statement of rejection. However, Appellants clearly indicate that
claim 14 is subject to the rejection. We therefore treat claim 14 as subject to
rejection and therefore on appeal before us.
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Findings of Fact
1. The Specification teaches that “[a]dding the information related
to the deposit formation data of each of the stored compositions substantially
facilitates the selection of candidate compositions capable of successfully
carrying out the deposit formation tests under the desired operating
conditions or statutory requirements” (Spec. 6, ll. 2-5).
2. The Specification teaches that “storing this information in the
combinatorial library not only allows for a rapid selection of multiple fuel
compositions in response to new requirements for a given test, but also
becomes another piece of information in addition to, for example, storage
stability, of the cataloged compositions” (Spec. 6, ll. 5-8).
3. The Specification teaches that the “information may also allow
for calculating necessary changes of the additives and fuels at the least cost”
(Spec. 6, ll. 9-10).
Principles of Law
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir.
1993).
However, the fact that a claim is broad does not mean that it is
indefinite, that is, undue breadth is not indefiniteness. In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977).
Analysis
We are not persuaded by the Examiner’s rejection. There is no doubt
that claim 16 broadly permits the deposit formation data results to be used in
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any other possible calculations. However, the Specification teaches several
specific further calculations using this data, including identifying optimal
compositions to improve fuel use, storage stability, or minimizing cost (FF
1-3).
The Examiner has not identified any element of the claim which
would be ambiguous to the ordinary artisan, who understands the concept of
further analyzing raw data, particularly in light of the discussion in the
Specification (see FF 1-3).
Conclusion of Law
Appellant has demonstrated that the Examiner erred in concluding
that the phrase “using the results of step (b) as a basis for obtaining a result
of further calculations” is indefinite. (Ans. 3).

B. 35 U.S.C. § 102(b) over Heneghan
The Examiner finds that “Heneghan teaches a method for measuring
the performance of fuel additives in a plurality of fuel samples, wherein a
measured performance criteria is measuring deposit formation from the fuel
sample” (Ans. 3).
Appellant argues that “Heneghan et al. fail to disclose a high
throughput method for screening fuel additive composition samples, under
program control, within the scope of appealed Claim 1” (App. Br. 6).
Appellant argues that “the purpose of the claims is to conduct a high
throughput method under program control, i.e., automated, such that a
relatively large number of different fuel additive composition samples can
be rapidly prepared and screened for deposit formation data” (App. Br. 11).
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In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
Heneghan teaches a “high throughput method for screening fuel additive
composition samples, under program control” as required by Claim 1?

Findings of Fact
4. The Specification teaches that the “expression ‘high
throughput’ as used herein shall be understood to mean that a relatively large
number of different fuel additive compositions or fuel compositions can be
rapidly prepared and analyzed” (Spec. 5, ll. 12-15).
5. The Specification teaches that the “expression ‘program
control’ as used herein shall be understood to mean the equipment used
herein in providing the plurality of fuel compositions is automated and
controlled by a microprocessor or other computer control device” (Spec. 6,
ll. 12-14).
6. Heneghan teaches “the development of a single-pass heat
exchanger system to evaluate jet fuel additives and presents numerous
results on carbon deposition” (Heneghan 480, col. 2).
7. Heneghan teaches that an “American Lewa Model EK-1
variable stroke, positive displacement diaphragm pump with a surge
suppressor provides fuel flow in the range [of ]1 to 100 ml/min at a pressure
of 3.45 MPa. To monitor the fuel flow rate independently, a Max
Machinery Model 213-310 positive displacement flow meter is employed”
(Heneghan 481, col. 1).

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8. Heneghan teaches that the
test fuel passes through the tubular test section at a
flow rate of 16 ml/min for 6, 12 or 24 hours. The test
section is heated by the copper block heater, which is
maintained at a predetermined temperature . . . At the
conclusion of the test, the test section is removed,
drained, cut into 25-mm or 50-mm length segments,
rinsed with hexane, dried in a vacuum oven, and
analyzed for carbon deposits on a Leco RC-412
multiphase carbon analyzer.

(Heneghan 481, col. 2).

9. Heneghan teaches that the “amount of carbon deposit is then
compared to baseline test results” (Heneghan 481, col. 2).
10. Heneghan teaches that “[v]arious baseline and blended jet fuels
were tested” (Heneghan 482, col. 1). Table 1 of Heneghan shows testing of
3 baseline fuels and Table 2 of Heneghan shows testing of 3 blended fuels
(Heneghan 482).
11. The Examiner finds that Heneghan teaches the use of “the
Sensotech Type TJE pressure transducer that provides the signal to the
Micristar controller, the data recording system of the Fluke model 2400B
computer with a Model 1722A controler [sic] using a Fisher Model 546 I/P
converter, the Hewlett Packard 5890 Series II gas chromatograph, and the
Leco RC-412 multiphase carbon analyzer” (Ans. 10-11; see Heneghan 480-
481).
12. The Examiner finds that “numerous of these commercial
components that are integrated into the fuel analysis system cited by
Heneghan in the sectioned titled, Experimental Work, on page 481 are
‘under program control’ as required by claim 1” (Ans. 11).
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Principles of Law
It is well settled that, “[t]o anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
It is also well settled that during examination, the PTO must interpret
terms in a claim using “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed…. An
essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as
much as possible, during the administrative process.

In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief …
will be refused consideration by the Board, unless good cause is shown.”).
Analysis
Claim Interpretation
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope can not be compared to the
prior art. In this case, Appellant challenges the Examiner’s interpretation of
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the phrase “high throughput method for screening fuel additive composition
samples, under program control” as recited in Claim 1, arguing that “the
high throughput method, as set forth in the present claims, is conducted
under program control, i.e., automated, such that a relatively large number of
different fuel additive composition samples can be rapidly prepared and
screened for deposit formation data” (App. Br. 6).
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
Specification to determine whether the meaning of the phrase “high
throughput method for screening fuel additive composition samples, under
program control” can be discerned. (Claim 1).
Both of the key terms in dispute, “high throughput” and “program
control” are explicitly defined in the Specification. The Specification
teaches that the “expression ‘high throughput’ as used herein shall be
understood to mean that a relatively large number of different fuel additive
compositions or fuel compositions can be rapidly prepared and analyzed”
(Spec. 5, ll. 12-15; FF 4).
The Specification does not, however, provide any specific standard or
requirement as to how many fuel additive compositions are necessary to be
considered a relatively large number. This lack of specificity lends itself to
a broad interpretation, and we therefore interpret “high throughput” as
inclusive of any analysis of two or more fuel additive compositions. See,
e.g., Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984) (“When a word of degree is used … [it] must [be
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determined] whether the patent's specification provides some standard for
measuring that degree.”).
The Specification teaches that the “expression ‘program control’ as
used herein shall be understood to mean the equipment used herein in
providing the plurality of fuel compositions is automated and controlled by a
microprocessor or other computer control device” (Spec. 6, ll. 12-14; FF 5).
The Specification teaches several ways to deliver fuel compositions
including one in which the “amount of fuel dispensed is determined by
metering pump 112, which can be computer controlled” (Spec. 15, ll. 20-
22). We therefore conclude that the broadest reasonable interpretation of
“program control” in the context of the Specification requires computer
control (FF 5).
Claim 1
Heneghan teaches a method for screening fuel additive composition
samples (FF 6). Heneghan teaches providing and testing at least six
different samples, which satisfies the “high throughput” requirement as
broadly interpreted above (FF 10).
Heneghan teaches that an “American Lewa Model EK-1 variable
stroke, positive displacement diaphragm pump with a surge suppressor
provides fuel flow in the range [of] 1 to 100 ml/min at a pressure of 3.45
MPa. To monitor the fuel flow rate independently, a Max Machinery Model
213-310 positive displacement flow meter is employed” (Heneghan 481, col.
1; FF 7). The Examiner finds that Heneghan teaches the use of “the
Sensotech Type TJE pressure transducer that provides the signal to the
Micristar controller, the data recording system of the Fluke model 2400B
computer with a Model 1722A controler [sic] using a Fisher Model 546 I/P
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converter, the Hewlett Packard 5890 Series II gas chromatograph, and the
Leco RC-412 multiphase carbon analyzer” (Ans. 10-11; Heneghan 481; FF
11-12).
The Examiner reasonably concludes that the fuel flow is computer
controlled as encompassed by the “program control” limitation of claim 1.
We are not persuaded by Appellant’s argument that “[c]ertainly,
Heneghan et al. do not disclose anything that would remotely be considered
a high throughput method” (App. Br. 11). As we noted previously, the
Specification does not provide any specific standard for “high throughput.”
We therefore interpreted “high throughput” as inclusive of any analysis of
two or more fuel additive compositions. See, e.g., Seattle Box Co., Inc. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)
(“When a word of degree is used … [it] must [be determined] whether the
patent's specification provides some standard for measuring that degree.”).
Further, Appellant’s Claim 1 does not impose any limitations on how
the “providing,” “measuring,” and “outputting” steps are performed (see
Claim 1). Thus, while Heneghan may not perform the method in a manner
identical to that disclosed in the Specification, the Examiner reasonably
finds that Heneghan satisfies the “providing”, “measuring”, and “outputting”
steps of Claim 1 (FF 6-12). “[L]imitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that
Heneghan teaches a “high throughput method for screening fuel additive
composition samples, under program control” as required by Claim 1.
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C. 35 U.S.C. § 102(b) over Cherpeck ‘178
The Examiner finds that “Cherpeck teaches a series of chemical
compound analogs that serve as fuel additives. Cherpech [sic] teaches testing
of multiple fuels samples by measuring their deposit formation” (Ans. 3).
Appellant argues that “Cherpeck ‘178 merely discloses individually
testing fuel compositions for deposit formation via a non-automated process.
At no point, however, is there any disclosure in Cherpeck ‘178 of a high
throughput method for screening a plurality of fuel additive samples for
deposit formation” (App. Br. 13).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
Cherpeck ‘178 teaches a “high throughput method for screening fuel
additive composition samples, under program control” as required by Claim
1?
Findings of Fact
13. Cherpeck ‘178 teaches that the “test compounds were blended
in gasoline and their deposit reducing capacity determined in an ASTM/CFR
single-cylinder engine test” (Cherpeck ‘178, col. 18, ll. 21-23).
14. Cherpeck ‘178 teaches that “[e]ach run was carried out for 15
hours, at the end of which time the intake valve was removed, washed with
hexane and weighed. The previously determined weight of the clean valve
was subtracted from the weight of the valve at the end of the run” (Cherpeck
‘178, col. 18, ll. 25-29).
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15. Cherpeck ‘178 teaches that the “amount of carbonaceous
deposit in milligrams on the intake valves is reported for each of the test
compounds in Table I” (Cherpeck ‘178, col. 18, ll. 37-39).
16. Cherpeck ‘178 teaches analysis of at least five different fuel
compounds in Tables I and II, the base fuel, preparations 11 and 12 and
Examples 1 and 2 (Cherpeck ‘178, col. 18).
17. The Examiner finds that, for Cherpeck ‘178, “[r]egarding
program control, the Waukesha CFR single cylinder engine is a program
control machine” (Ans. 11).
Analysis
Cherpeck ‘178 teaches a method for screening of at least five different
fuel additive composition samples where the “test compounds were blended
in gasoline and their deposit reducing capacity determined in an ASTM/CFR
single-cylinder engine test” (Cherpeck ‘178, col. 18, ll. 21-23; FF 13, 16).
Cherpeck ‘178 teaches a machine which provides the samples under
“program control” (FF 17), which measures the samples and which outputs
the samples as shown in Table I (FF 15).
Appellant argues that “Cherpeck ‘178 merely discloses individually
testing fuel compositions for deposit formation via a non-automated process.
At no point, however, is there any disclosure in Cherpeck ‘178 of a high
throughput method for screening a plurality of fuel additive samples for
deposit formation” (App. Br. 13).
We are not persuaded. Based on our claim interpretation, the analysis
by Cherpeck ‘178 of multiple samples reasonably satisfies the “high
throughput” requirement. Appellant has not argued or rebutted the
Examiner’s finding that the single cylinder engine is under “program
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control”. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief …
will be refused consideration by the Board, unless good cause is shown.”).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that
Cherpeck ‘178 teaches a “high throughput method for screening fuel
additive composition samples, under program control” as required by Claim
1.
D. 35 U.S.C. § 102(b) over Cherpeck ‘315
The Examiner finds that “Cherpeck [‘315] teaches measuring fuel
deposits by TGA in the presence of air, and teaches raising the termperatures
[sic] and measuring the deposits at different temperatures (see Example 14),
and accordingly meets the limitations of claims 1 and 5-10” (Ans. 4).
Appellant argues that “[e]ach example carried out by Cherpeck ‘315 is
a manual laboratory test. At no point is there any disclosure in Cherpeck
‘315 of a high throughput method for screening a plurality of fuel additive
samples for deposit formation” (App. Br. 15).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
Cherpeck ‘315 teaches a “high throughput method for screening fuel
additive composition samples, under program control” as required by Claim
1?
Findings of Fact
18. Cherpeck ‘315 teaches that the “thermal stability of various test
samples was measured by thermogravimetric analysis (TGA). The TGA
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procedure employed a DuPont 951 TGA instrument coupled with a
microcomputer for data analysis” (Cherpeck ‘315, col. 21, ll. 31-34).
19. Cherpeck ‘315 teaches that “[s]amples of the fuel additive
(approximately 25 milligrams) were heated from 25°C. to 700°C. at 10°C.
per minute under air flowing at 100 cubic centimeters per minute. The
temperature at which 95% weight loss occurred for each of the test samples
was recorded” (Cherpeck ‘315, col. 21, ll. 35-39).
20. The Examiner finds that the “system in Cherpeck [‘315] is a
TGA system that is operated by microcomputer” (Ans. 12).
21. Cherpeck ‘315 teaches analysis of five different samples in
Table I (Cherpeck ‘315, col. 21, ll. 42-50).
Analysis
Cherpeck ‘315 teaches a method of screening at least five different
fuel additive composition samples where the “thermal stability of various
test samples was measured by thermogravimetric analysis (TGA). The TGA
procedure employed a DuPont 951 TGA instrument coupled with a
microcomputer for data analysis” (Cherpeck ‘315, col. 21, ll. 31-34; FF 18,
21). The Examiner finds that the “system in Cherpeck [‘315] is a TGA
system that is operated by microcomputer” (Ans. 12; FF 20).
Appellant argues that “[e]ach example carried out by Cherpeck ‘315 is
a manual laboratory test. At no point is there any disclosure in Cherpeck
‘315 of a high throughput method for screening a plurality of fuel additive
samples for deposit formation” (App. Br. 15).
We are not persuaded. Based on our claim interpretation, the analysis
by Cherpeck ‘315 of multiple samples reasonably satisfies the “high
throughput” requirement. Appellant has not argued or rebutted the
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Examiner’s finding that the single cylinder engine is under “program
control.” Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief …
will be refused consideration by the Board, unless good cause is shown.”).
We also do not find persuasive Appellant’s argument that Cherpeck
‘315 is a manual laboratory test. The “program control” limitation does not
require that the entire test is automated, only that “the equipment used herein
in providing the plurality of fuel compositions is automated and controlled
by a microprocessor or other computer control device” (Spec. 6, ll. 12-14;
FF 5). The Examiner finds that the assay of Cherpeck ‘315 “employed a
DuPont 951 TGA instrument coupled with a microcomputer for data
analysis” (Cherpeck ‘315, col. 21, ll. 31-34; FF 18, 21). “[L]imitations are
not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989)).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that
Cherpeck ‘315 teaches a “high throughput method for screening fuel
additive composition samples, under program control” as required by Claim
1.
E. 35 U.S.C. § 103(a) over Cherpeck ‘178 and Burow
The Examiner finds that the person of “ordinary skill in the art would
have recognized the advantages of using generic and routine robotic based
systems, computers, and remote operations as taught by Burow for the types
of chemical analysis of Cherpeck because of the increase throughput
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provided by these assemblies when dealing with voluminous sample sizes”
(Ans. 6).
Appellant argues that “Burow et al. do not disclose that a fuel additive
composition sample can be screened in a high throughput manner under
program control” (App. Br. 17). Appellant argues that “[i]t is the
Examiner’s misguided belief that Example 3 of Cherpeck ‘178 teaches
testing multiple fuel samples by measuring their deposit formation” (App.
Br. 17). Appellant argues that “Example 3 of Cherpeck ‘178 discloses
individually testing each fuel sample by running each test in an engine. As
such, there is simply no reason why one skilled in the art would even look to
Cherpeck ‘178 and Burow et al.” (App. Br. 17).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
the combination of Cherpeck ‘178 and Burow suggest a “high throughput
method for screening fuel additive composition samples, under program
control” as required by Claim 1?
Findings of Fact
22. Burow teaches “an automated robotic process for handling,
mixing, moving, storing, assaying, and detecting samples” (Burow 5 ¶
0053).
23. Burow teaches that the “devices are typically located in or on a
station location, e.g., a platform or table comprising electrical connections
and computer and/or controller connections” (Burow 7 ¶ 0074).
24. Burow teaches that the “high throughput screening systems of
the invention typically operate under control of one or more computer
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systems. For example, a control unit is optionally coordinated with the
operation of the high throughput system” (Burow 13 ¶ 0134).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
In ICON, the Federal Circuit explained that
A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992). In other
words, “familiar items may have obvious uses beyond their primary
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purposes.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct.
1727, 1742 (2007).

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007).
Analysis
Cherpeck ‘178 teaches a method for screening of at least five different
fuel additive composition samples where the “test compounds were blended
in gasoline and their deposit reducing capacity determined in an ASTM/CFR
single-cylinder engine test” (Cherpeck ‘178, col. 18, ll. 21-23; FF 13, 16).
Burow teaches “an automated robotic process for handling, mixing,
moving, storing, assaying, and detecting samples” (Burow 5 ¶ 0053; FF 22).
Burow teaches that the “high throughput screening systems of the invention
typically operate under control of one or more computer systems” (Burow
13 ¶ 0134; FF 24).
In applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that it would have been obvious to modify the
screening fuel additive assay of Cherpeck ‘178 in view Burow since the
person of “ordinary skill in the art would have recognized the advantages of
using generic and routine robotic based systems, computers, and remote
operations as taught by Burow for the types of chemical analysis of
Cherpeck because of the increase throughput provided by these assemblies
when dealing with voluminous sample sizes” (Ans. 6).
Appellant argues that “Example 3 of Cherpeck ‘178 discloses
individually testing each fuel sample by running each test in an engine. As
such, there is simply no reason why one skilled in the art would even look to
Cherpeck ‘178 and Burow et al.” (App. Br. 17).
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We are not persuaded. Our reviewing court stated in Leapfrog Enters.
Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary
skill in the art would have found it obvious to combine an old
electromechanical device with electronic circuitry “to update it using
modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost.” Id. at 1163. “The combination is
thus the adaptation of an old idea or invention … using newer technology
that is commonly available and understood in the art.” Id.
The combination of Cherpeck ‘178 and Burow is precisely the sort of
combination envisioned in Leapfrog, where the fuel additive screening
process of Cherpeck ‘178 is updated with the analytical robotics of Burow
(FF 22-24).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that the
combination of Cherpeck ‘178 and Burow suggest a “high throughput method for
screening fuel additive composition samples, under program control” as required by
Claim 1.
F. 35 U.S.C. § 103(a) over Cherpeck ‘178
Having affirmed the anticipation rejection of claim 1 over Cherpeck ‘178, we
necessarily affirm claim 1 as obvious over Cherpeck ‘178 for the reasons given above.
See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982)(“evidence establishing lack of
all novelty in the claimed invention necessarily evidences obviousness”).
G. 35 U.S.C. § 103(a) over Cherpeck ‘178, Burow, and Luttermann
The Examiner finds it obvious to modify the method of Cherpeck ‘178 and
Burow with Luttermann since “one of ordinary skill in the art would have recognized
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that combinatorial approaches using decision making processes for selection of
positive samples for further testing as taught by Luttermann is well-suited for large
sample sets” (Ans. 8).
The Examiner provides sound fact-based reasoning for combining Luttermann
with Cherpeck ‘178 and Burow. As Appellant did not identify any material defect in
the Examiner’s reasoning, and only argues the underlying rejection of Cherpeck ‘178
and Burow which we affirmed above, we affirm the this rejection for the reasons
stated by the Examiner.
SUMMARY
In summary, we reverse the rejection of claim 16 under 35 U.S.C.
§ 112, second paragraph as indefinite.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Heneghan. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006),
we also affirm the rejection of claims 2 and 8 as these claims were not
argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Cherpeck ‘178. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-6 and 8-11
as these claims were not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Cherpeck ‘315 (Ans. 4). Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-11 as these
claims were not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Cherpeck ‘178 and Burow. Pursuant to 37 C.F.R.
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§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-6, 8-
13, 15, and 17 as these claims were not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Cherpeck ‘315. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006),
we also affirm the rejection of claims 2-11, 62, and 63 as these claims were
not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Cherpeck ‘178, Burow, and Luttermann. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-6, 8-15,
and 17 as these claims were not argued separately.
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)(iv)(2006).

AFFIRMED-IN-PART

alw

MICHAEL E. CARMEN, ESQ.
M. CARMEN & ASSOCIATES, PLLC
SUITE 400
170 OLD COUNTRY ROAD
MINEOLA, NY 11501