Ex Parte Yoshida et al

Patent Trial and Appeal Board

Nov 28, 2016

12037773 (P.T.A.B. Nov. 28, 2016)

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.
12/037,773 02/26/2008 Tsutomu Yoshida TS8114 (US) 4444
23632 7590 11/30/2016
SHF! T OH miUPANY EXAMINER
P O BOX 2463 HINES, LATOSHAD
HOUSTON, TX 77252-2463
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUTOMU YOSHIDA,
NOBUHIRO OKABE, and HIROKI YOSHIDA
Appeal 2015-004876
Application 12/037,773
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 28, 2013 decision finally rejecting claims 1, 2, and 7—202 as
unpatentable under 35 U.S.C. § 103(a). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Shell Oil Company (Br. 2).
2 Dependent claims 13 and 14 depend from claims 5 and 6, respectively.
Appellants canceled claims 5 and 6 by Amendment (filed July 5, 2013). For
purposes of this appeal, we have assumed that claims 13 and 14 depend from
claims 1 and 2 (this would make them essentially duplicative of claims 11
and 12). If prosecution continues, a correction must be made to the
dependency of claims 13 and 14 or they should be cancelled.
Appeal 2015-004876
Application 12/037,773
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a fuel composition for diesel
engines with improved oxidation stability at high temperature (Spec. 1:1—3;
3:3—6). Claim 1 is representative and is reproduced below from the Claims
Appendix of the Appeal Brief (paragraphing added; key claim limitations
shown in italics)'.
1. A fuel composition for diesel engines having oxidation
stability capable of withstanding practical use even under a
high-temperature environment in a common rail type fuel
injection device comprising:
(1) up to 80% volume of one or more intermediate fractions
selected from the group consisting of a straight-run kerosene
fraction, a straight-run light oil fraction, a cracked light oil
fraction, a cracked kerosene fraction and hydrodesulphurised
products of these', and
(2) at least 20%) volume of gas-to-liquidproduct, and no more
than 200 ppmw of an antioxidant,
wherein, in a test of oxidation stability in accordance with
the EN14112 test, the time until a change of electrical
conductivity occurs at a liquid temperature of 150°C is at
least four hours,
wherein the antioxidant is an amine-based antioxidant or a
phenol-based antioxidant.
Br. 10 (Claims App.).
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Application 12/037,773
REJECTION
Appellants appeal the rejection of claims 1, 2, and 7—20 as
unpatentable under 35 U.S.C. § 103(a) over Millington3 in view of Carter.4
Appellants make substantive arguments in support of the patentability
of all claims based on limitations present in independent claim 1 (see
generally, Br. 5—9). Accordingly, our discussion will focus on the
obviousness rejection of claim 1.
DISCUSSION
The Examiner finds that Millington teaches clause (2)’s limitation
reciting “at least 20% volume of gas-to-liquid product” because Millington
discloses Fischer-Tropsch derived fuel compositions “of at least 70% w/w”
(Ans. 3, citing Millington || 63—67, 79; see also Ans. 4—5), which includes
those derived by so-called “‘Gas-to-Liquids’” technology (Ans. 3, citing
Millington ^77).
The Examiner further finds that Millington teaches clause (l)’s
limitation reciting “up to 80% volume of one or more intermediate fractions”
and the requisite Markush group which follows, because Millington teaches
that “the fuel composition may contain, in addition to the Fischer-Tropsch
derived fuel, one or more other fuel components . . ., in particular diesel fuel
components . . . .” (Ans. 3—4, citing Millington ^ 63). According to the
Examiner, Millington further suggests clause (l)’s “intermediate fractions”
3 Millington et al., U.S. Patent Pub. 2005/0086854 Al, published April 28,
2005 (“Millington”).
4 Carter et al., U.S. Patent Pub. 2007/0197412 Al, published August 23,
2007 (“Carter”).
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Application 12/037,773
element because Millington discloses that “typical diesel fuel components
may comprise liquid hydrocarbon middle distillate fuel oils ... in the
amount of 0 to 90 vol/vol%” (Ans. 4, emphasis in original, citing Millington
f 67; Table 1).
Although Millington is silent with respect to: (i) any oxidation
stability results provided by testing the disclosed composition or
(ii) specifically disclosing the claimed antioxidants therein, the Examiner
determines that because
the claimed products appear to be identical to the diesel fuel
disclosed in Millington . . . , it would have been obvious to one
of ordinary skill in the art that placing the Millington fuel
composition under the same test conditions of EN 14112 . . .
would produce the same or similar results claimed by the present
invention.
(Ans. 5). The Examiner further finds that Carter “discloses the use of at
least one additive [such as a phenolic antioxidant] in order to increase the
thermal stability of a hydrocarbon composition for diesel engines ... in a
quantity relative to the hydrocarbon composition . . . comprised between 1 to
1000 ppm” (Ans. 4, citing Carter H 12, 55; see also Ans. 11, citing Carter
11 55, 58). Therefore, according to the Examiner, it would have been
obvious to the ordinary skilled artisan “to use [Carter’s] antioxidant... in
[Millington’s] composition ... in order to increase the thermal stability of
hydrocarbon compositions” (Ans. 6, citing Carter 1 58).
Appellants make the following arguments urging reversal of the
Examiner’s § 103(a) rejection: (1) “[t]he claimed fuel composition is
different than the compositions disclosed in the references” (Br. 5); (2) “[n]o
teaching in either reference has been raised to the claimed oxidation
stability” (id.); (3) “[n]o teaching in either reference has been raised to the
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Application 12/037,773
claimed concentration of antioxidants” (id.); and (4) “[o]ne of skill in the art
would not seek to combine the cited references” (id. at 6).
With regard to argument (1), Appellants argue that Millington’s “fuel
compositions . . . and the [fuel composition of the] present claims are neither
the same nor similar to the claimed fuel composition” because “Millington
utilizes finished fuelsM” whereas “the present claims specify the use of
refinery intermediate fractions” ((original emphasis) id.). Appellants
conclude that “one of skill in the art would not expect refinery intermediate
fractions to perform the same as finished fuels” (id.).
It is, however, well established that when claimed and prior art
products are produced by identical or substantially identical processes, the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). This is true whether the
rejection is under 35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103
(obviousness), and is based on the fact that the PTO is not in a position to
manufacture products or to obtain and compare prior art products. Id.
Appellants’ arguments are not persuasive because the Examiner has
explained why Millington’s middle distillate fuel oils, specifically petroleum
derived gas oils, are produced by substantially similar processes described in
Appellants’ Specification (Ans. 3—4, 7, citing Millington | 67); see also
Spec. 5,11. 8, 14—18 (“[t]he intermediate fraction^] ... are obtained by
normal pressure distillation of crude oil. . . contact cracking or
thermocracking or hydrocracking, etc. of heavy oil.”)).
Moreover, the Examiner has explained why Millington’s Fischer-
Tropsch derived gas oils, specifically Shell™ “Gas-to-Liquids”, i.e., GTL
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Application 12/037,773
products, are derived by substantially similar processes described in
Appellants’ Specification as well (Ans. 2—3; 7, citing Millington | 63—67,
77); see also Spec. 4,11. 8, 4—13 (e.g., disclosing that “the GTL may be
obtained by performing a Fischer-Tropsch reaction on synthesis gas . . . .”)).
Placing the burden on Appellants is appropriate under these
circumstances. Best, 562 F.2d at 1255. Appellants have not met this
burden—the record evidence is silent as to any demonstration that
Millington’s disclosed processes would not form the claimed combination of
an intermediate fraction (petroleum derived gas oils) in the amount of up to
80 volume % and the Fischer-Tropsch gas-to-liquid product in the amount of
at least 20 volume % (see, e.g., Millington, Table 1, experiment nos. 1.3—1.6
testing compositions varying in volume % Fischer-Tropsch (SDMS, i.e.,
GTL (see id. at 177)) derived gas oil fuel FI and volume % conventional
petroleum derived ultra low sulphur diesel fuel F2).5 Therefore, we are
unpersuaded by Appellants’ argument (1).
Appellants contend, in connection with argument (2), that “Millington
is completely silent with respect to the presence of oxidants in the
composition, in the claimed concentration^] and is similarly silent with
respect to the claimed oxidation stability of the fuel composition” (Br. 6).
Appellants’ arguments are unpersuasive because the claims do not
recite a specific concentration of oxidants. Rather, the claims recite a
specific concentration of antioxidant. As the Examiner found, “Millington
5 The Examiner’s determination that Millington suggests the specific volume
percentage proportions of the compositions recited in claim 1 ’s clauses (1)
and (2) is not in dispute (see, e.g., Ans. 3, 4, generally Br.).
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Application 12/037,773
discloses . . . additional additives that are used in the fuel[,] such as
antioxidants” (Ans. 5, citing Millington 125).
Appellants, moreover, are incorrect in arguing that a reference in the
Examiner’s proposed combination must suggest the same problem addressed
by the inventors. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need
not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.”); see also KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419—20 (2007) (“In determining whether the subject matter of
a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls .... The first error of the Court of Appeals
in this case was . . . holding that courts and patent examiners should look
only to the problem the patentee was trying to solve.”).
Appellants further argue that “[bjecause [Millington] completely fails
to disclose or even suggest antioxidants or the oxidation stability of the
resulting fuel composition, there is no motivation for one of skill in the art to
perform” the claimed EN14112 test for oxidation stability (Br. 6).
Appellants’ arguments are not persuasive. As the Examiner found,
“Millington specifically teaches the claimed fuel composition of combining
an intermediate fraction and a gas-to-liquid fuel composition” and suggests
antioxidants as an additive (Ans. 5, 9). Placing the burden on Appellants to
show that Millington’s products do not necessarily or inherently possess the
requisite performance on the EN14112 test is appropriate under these
circumstances as well. Best, 562 F.2d at 1255. Appellants have not met this
burden. Therefore, we are unpersuaded by Appellants’ argument (2).
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With respect to argument (3), Appellants argue that the Examiner’s
reliance on Carter’s antioxidant teachings is misplaced because “Carter
specifically relates to a method to increase the overall concentration of
antioxidant additives in biodiesel fuels” (Br. 6). Appellants further argue
that “[o]ne of skill in the art understands that the chemistry of biodiesels is
drastically different than that of the intermediate fraction specified in the
present claims and would not find the teachings of Millington and Carter
instructive” {id.).
We are unpersuaded because, inter alia, the Examiner’s determination
that Carter suggests overlapping ranges for the antioxidant component
recited in claim 1 is not in dispute (see, e.g., Ans. 9—10, generally Br.).
It is well established that:
a prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior
art. [Citations omitted.] Where the ‘claimed ranges are
completely encompassed by the prior art, the conclusion [that
the claims are prima facie obvious] is even more compelling
than in cases of mere overlap.’
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003)).
When the difference between the claimed invention and the prior art is
some range or other variable within the claims, the Federal Circuit has
consistently held that the Appellants must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. See, e.g., Peterson, 315 F.3d at 1329;
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests
with Appellants to establish (1) that the alleged unexpected results presented
as being associated with the claimed invention are, in fact, unexpected,
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(2) that the comparisons are to the disclosure of closest prior art, and (3) that
the supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972).
On this record, Appellants have not made such a showing.
In connection with arguments (3) and (4), the Supreme Court has
made clear that an 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, 550 U.S. at 418. That is
because “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421. It is also well established that a reference is
good for all it fairly teaches a person having ordinary skill in the art, even
when the teaching is a cursory mention. E.g., In re Mills, 470 F.2d 649, 651
(CCPA 1972). As pointed out by the Examiner, although Carter specifically
teaches that oxygenated solvents are needed to increase the antioxidant’s
stability in biodiesels, Carter fairly teaches that antioxidant addition further
increases oxidative stability (Ans. 11 (citing Carter 115)). The Examiner
further found that Carter exemplifies that it was known to add antioxidants
to increase the oxidative stability of a blended fuel of biodiesel and
petroleum distillates (e.g., Ans. 11; see Carter Abstract).
Thus, a preponderance of the evidence supports the Examiner’s
reasonable position that it would have been prima facie obvious to combine
fuel compositions, comprised of an intermediate fraction (petroleum derived
gas oils) in the amount of up to 80 volume %, the Fischer-Tropsch gas-to-
liquid product in the amount of at least 20 volume % components, and a
phenol-based antioxidant that overlaps the claimed range, and that the
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resultant fuel composition would have met the requisite functional
limitation, as required by the claim.
Because of the Examiner’s finding of overlapping ranges of phenol-
based antioxidant recited in the fuel composition, as well as the predictable
combination of an intermediate fraction in the amount of up to 80 volume %
and the Fischer-Tropsch gas-to-liquid product in the amount of at least 20
volume %, the Examiner’s determination that the specific oxidation stability
property recited in the claim would follow is reasonable. Stated differently,
the fact that Appellants have recognized other properties which would flow
naturally from following the applied prior arts’ teaching or suggestion for
the amounts of the components of the composition, cannot be the basis for
patentability when the differences, if any, would otherwise have been
obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Cf. In re
Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent
law, a compound and all of its properties are inseparable; they are one and
the same thing”).
As explained above and in the Answer, the Examiner had a reasonable
basis to believe that the fuel composition of the combined applied prior art
would have the oxidation stability recited in the claims. Appellants have not
offered persuasive evidence to the contrary. We, therefore, discern no error
in the Examiner’s determination that the applied prior art renders obvious
the fuel composition of claims 1 and 17, and the process of claim 16 to
provide the fuel composition of Appellants’ invention for diesel engine
operation. Therefore, we are unpersuaded by arguments (3) and (4).
Appellants have not persuasively argued that the facts and reasons
relied on by the Examiner are insufficient to establish a prima facie case of
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obviousness as to claims 1,16, and 17. Dependent claims 2, 7—15, and 18—
20 will fall with each of their respective independent claims. 37 C.F.R.
§ 41.37(c)(l)(iv).
Accordingly, we affirm the rejection of claims 1, 2, and 7—20 for the
reasons set forth above and explained in the Examiner’s Answer.
CONCLUSION
We AFFIRM the rejection of claims 1, 2, and 7—20 under 35 U.S.C.
§ 103(a) as obvious over Millington in view of Carter.
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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