Ex Parte Zehler

Board of Patent Appeals and Interferences

Jan 19, 2007

10051938 (B.P.A.I. Jan. 19, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EUGENE R. ZEHLER
____________

Appeal 2006-2269
Application 10/051,938
Technology Center 3600
____________

Decided: January 19, 2007
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 38-40, 43, 46-48, 52, 54-56, 59, 62-64,
67-70, 73, 76-78 and 81-84. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 134.
We AFFIRM and REMAND.
Appeal 2006-2269
Application 10/051,938

INTRODUCTION
The claims are directed to a shock absorber containing one or more
biodegradable esters as the dampening fluid (Specification 1, ll 3-4). Claims
38 and 46 are illustrative:
38. A shock absorber comprising a cylinder, the cylinder
defining a chamber therein and containing a fluid; a piston rod
sealingly projecting into the cylinder, the piston rod being axially
displaceable with respect to the cylinder; a piston attached to the
piston rod, the piston being slidably disposed within the cylinder to
sealingly divide the cylinder into a first chamber and a second
chamber; a passageway disposed in at least a portion of the piston
providing for fluid communication between the first and second
chambers; wherein the fluid comprises a biodegradable polyol ester,
said polyol ester having a polyol component and a carboxylic acid
component, the polyol component comprising a hindered polyol and
the carboxylic acid component comprising a mixture of two or more
C5, C6, C7, C8 and C9 linear monocarboxylic acids; and wherein said
fluid is at least 80% biodegradable.
46. The shock absorber according to claim 38, wherein said
carboxylic acid component further comprises a dicarboxylic acid.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Funkhouser US 2,630,193 Mar. 3, 1953
Duncan US 5,681,800 Oct. 28, 1997
The rejections as presented by the Examiner are as follows:
1. Claims 46-48, 62-64 and 76 are rejected under 35 U.S.C. § 112, 1st
paragraph as containing subject matter which was not described in the
Specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventor(s), at the time the application was
filed, had possession of the claimed invention.
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2. Claims 38-40, 43, 52, 54-56, 59, 67-70, 73, 77-78 and 81-84 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Duncan in
view of Funkhouser.1
Rather than reiterate the respective positions advocated by the Appellant
and by the Examiner concerning these rejections, we refer to the Brief and
Reply Brief, and to the Answer respectively for a complete exposition
thereof.
The claims were not argued separately. Accordingly we choose
claims 38 and 46 as the representative claims on which it render our
decision.
OPINION
35 U.S.C. § 103(a) REJECTION OVER DUNCAN IN VIEW OF
FUNKHOUSER
The Examiner rejected claims 38-40, 43, 52, 54-56, 59, 67-70, 73,
77-78 and 81-84 under § 103(a) over Duncan in view of Funkhouser. The
Examiner stated that Duncan discloses biodegradable lubricants including
the use of these lubricants as hydraulic fluids (Answer 3). Referring to
Duncan’s Table 8, the Examiner found that the disclosure of
“TPE/C810/Ck8” includes pentaerythitol (a polyol) with a carboxylic acid
(C810) having a mixture of linear C6 and C8 acids, and a biodegradability of
at least 80% (Answer 3-4). However, the Examiner noted that Duncan fails
to disclose the claimed shock absorber structure. The Examiner found that

1 There appears to be an inconsistency between the rejection of at least claim
40, which recites that the hindered polyol is trimethylolpropane, and the
allowance of claim 53 which appears to be identical to claim 40. See our
REMAND section for a more detailed discussion of the conflict.
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Application 10/051,938

Funkhouser demonstrates that the claimed shock absorber structure is
conventional in the art. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to combine “the fluid disclosed by Duncan . . . with a shock absorber as
taught by Funkhouser as an obvious implementation of the fluid which
addresses environmental concerns with regards to leaking shock absorbers”
(Answer 4).
Appellant argues that the “C810” acid disclosed by Duncan is a linear
carboxylic acid mixture composed of n-C8 and n-C10 acids with minor
amounts of n-C6 and n-C12 acids present (Br. 10). Appellant further argues
that Duncan does not contain any teaching that “C810” has a mixture as
claimed or that it is used as a dampening fluid (Br. 10).
Appellant also argues that Duncan provides no indication of any
beneficial result (i.e., better dampening capabilities or improved
biodegradability) from including a C6 acid in the “C810” composition
(Br. 10-11). In this regard, Appellant further argues that Duncan does not
disclose a dampening fluid having a C6 acid (Br. 10). Appellant contends
that, given Duncan’s focus on mixing linear and branched acids, there would
be no motivation or reasonable expectation of success in forming a mixture
as claimed by Appellant (Br. 11).
The Examiner responds that Duncan’s Table 8 discloses that the
“TPE/C810/Ck8” is a polyol ester which contain a hindered polyol
(i.e., pentaerthitol) and a carboxylic acid (i.e., C810) (Answer 5). The
Examiner indicates that both Table 1 and 2 and column 20, lines 44-50 of
Duncan disclose that “C810” contains C6 and C8 acids (Answer 5). The
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Application 10/051,938

Examiner states that Duncan discloses a variety of applications for the
biodegradable lubricant, including use as hydraulic fluid (Answer 5-6).
We have considered all of Appellant’s arguments and find them
unpersuasive. We agree with the Examiner’s ultimate conclusion that the
claims are unpatentable over Duncan in view of Funkhouser.
Duncan indicates that the composition “TPE/C810/Ck8” contains a
hindered polyol (i.e., TPE (technical grade pentaerythritol)) and a mixture of
C6, C8, C10 and C12 carboxylic acids (i.e., “C810”) (see the footnotes to
Tables 1, 2, and 3). Moreover, Appellant discloses that suitable “hindered
polyols” include “but are not limited to . . . pentaerythritol, dipentaerythritol
. . .” (Specification 3, ll, 13-15), which are the same polyols used by Duncan
as above noted.
We note that Appellant uses the open-ended transitional language
“comprising” when claiming the biodegradable “fluid.” Such open-ended
claim language leaves the claim open to the presence of any other
compounds in addition to those recited in the claim. Genentech, Inc. v.
Chiron, Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997)
(“Comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim). Therefore, the mere
presence of C10 and C12 acids in the “C810” mixture would not prevent
Duncan’s disclosure that “C810” also possesses C6 and C8 acids from
satisfying the particular claim feature of “at least two or more C5, C6, C7,
C8 and C9 linear monocarboxylic acids.”
We are not persuaded by Appellant’s argument that Duncan fails to
disclose that the polyol ester containing the “C810” with a C6 acid should be
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Application 10/051,938

used as a dampening (i.e., hydraulic) fluid. As the Examiner indicates,
Duncan discloses that his biodegradable fluids may be used as hydraulic
fluid (Duncan, col. 13, ll. 25-45). As part of his disclosure, Duncan further
indicates that when the fluid is used as hydraulic fluid, it is typically
composed of about 90-99% of the base stock of polyol esters with the
balance being additives (Duncan, col. 13, ll. 39-41). Duncan’s broad
disclosure reasonably appears to be applicable to any of his disclosed polyol
esters, including the “TPE/C810/Ck8” blend cited by the Examiner.
We are unpersuaded by Appellant’s argument that there is no
motivation or reasonable expectation of success in creating a fluid having
the mixture of linear carboxylic acids as claimed (i.e, a mixture of two or
more C5 to C9 linear monocarboxylic acids). Duncan clearly discloses that
“C810” acid mixture comprises a blend of C6 and C8 carboxylic acids
(See Table 1, 2, 3 and 8). Therefore, Duncan not only provides motivation
for making a mixture of linear monocarboxylic acids encompassed by
Appellant’s claims, but he also successfully produces the mixture as evinced
by his examples.
Based on the foregoing, we affirm the Examiner’s rejection of claims
38-40, 43, 52, 54-56, 59, 67-70, 73, 77-78 and 81-84 over Duncan in view of
Funkhouser.
35 U.S.C. § 112, 1ST PARAGRAPH REJECTION
The Examiner rejected claims 46-48, 62-64 and 76 under § 112, 1st
paragraph as containing new matter and thus violating the written
description requirement of this paragraph. Specifically, the Examiner stated
that the “limitations requiring a mixture of monocarboxylic acid and
dicarboxylic acid . . . are not supported by the disclosure . . .” (Answer 3).
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Appellant argues that the Specification, as filed, contained original
claims which recited esters based upon a mixture of carboxylic acids having
from 5 to 9 carbon atoms, and an incorporation-by-reference of US Patent
5,021,179 (henceforth indicated as Zehler ‘179) (Br. 6). Appellant contends
that his Specification at page 3, lines 16-26, contemplates mixtures of polyol
esters based upon various carboxylic acids, including mixtures of carboxylic
acids disclosed in Zehler ‘179 (Br. 6-7). Appellant contends that Zehler
‘179 describes esters based upon “monovalent and divalent acids” which
Appellant construes to mean monocarboxylic and dicarboxylic acids,
respectively (Br. 7). Appellant argues that mixtures of monocarboxylic and
dicarboxylic acids are described throughout Zehler ‘179 (Br. 7).
Appellant further argues that the Examiner inappropriately relies on
In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972) to support his
finding that the moncarboxylic and dicarboxylic acids claim features are not
supported (Br. 8). Appellant argues that the holding in Smith is not
applicable to the facts of the present appeal (Br. 9). Reasoning from the
holding in Smith, Appellant contends that the “presently claimed mixtures of
dicarboxylic acid and monocarboxylic acids are not a subgenus based upon a
disclosure of a single species within that subgenus” (Br. 9). Rather,
Appellant contends, the Specification “clearly contemplates the use of
divalent carboxylic acids with a variety of monocarboxylic acids and
mixtures thereof” (Br. 9).
Appellant argues that to find that he did not have possession of a
mixture of a divalent carboxylic acid and monovalent carboxylic acids based
on the disclosure of Zehler ‘179 would “require Appellant to literally
disclose every possible combination of monovalent and divalent carboxylic
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Application 10/051,938

acids” (Br. 9). Appellant contends that he has specifically disclosed the
claimed mixture of monocarboxylic acids and that he has further disclosed,
via Zehler ‘179, the carboxylic acid component may include a dicarboxylic
acid (Br. 9). Based on these disclosures, Appellant argues that one of
ordinary skill in the art “would readily understand that the optional
dicarboxylic acid can be incorporated into any of the disclosed
monocarboxylic acid components or mixtures” (Br. 9).
The Examiner responds that Appellant’s “claims 46, 62 and 76 all
require a polyol ester having a polyol component comprising a mixture of
two or more C5, C6, C7, C8 and C9 linear mono-carboxylic acids, the
carboxylic acid component further comprising a di-carboxylic acid, and the
fluid having at least 80% biodegradability” (Answer 4). The Examiner
contends that the original disclosure fails to disclose this claimed
combination (Answer 4). Rather, the Examiner contends that “the mere
suggestion that esters according to the invention can be made by the method
described in the incorporated reference [Zehler ‘179] fails to support the
specific fluid composition in the instant claims” (Answer 4). While the
Examiner recognizes that Zehler ‘179 contemplates esters with monovalent
and divalent acid components, nevertheless, the Examiner maintains that
such disclosure does not support Appellant’s claim to “a carboxylic acid
component comprising a mixture of two or more C5, C6, C7, C8 and C9
linear mono-carboxylic acids . . . [with a] dicarboxylic acid” (Answer 4-5).
The Examiner indicates that Appellant’s original disclosure
(i.e., page 3, lines 1-5) specifies that the dampening fluid according to the
invention is comprised of polyol esters where the carboxylic acid component
is mono-carboxylic acid having about 5 to 18 carbon atoms (Answer 5). The
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Application 10/051,938

Examiner states that there is no indication that the instant invention at the
time of filing was composed of anything other than mono-carboxylic acid
(Answer 5).
Appellant replies that Zehler ‘179 must be read as if its entire
disclosure were copied verbatim into the original disclosure of the subject
Specification (Reply Br. 2-3). Appellant contends that one of ordinary skill
in the art would have recognized that the combinations of monocarboxylic
and dicarboxylic acids discussed in Zehler ‘179 could be used in conjunction
with any of the embodiments disclosed in Appellant’s Specification (Reply
Br. 3).
We have considered all of Appellant’s arguments and find them
unpersuasive. We agree with the Examiner’s ultimate conclusion that claims
46-48, 62-64 and 76 are properly rejected under §112, 1st paragraph as
violating the written description requirement.
We note that Appellant’s statement of incorporation by reference of
the Zehler ‘179 patent on page 3 of his Specification indicates that the patent
is being incorporated for its disclosure of the method for making polyol
esters (i.e., “The esters according to the invention can be made by the
method described in U.S. patent 5,021,179, the entire contents of which is
incorporated by reference” (emphasis added)) (Specification 3, ll. 20-22).
Therefore, we find that, by Appellant’s own words, it is the method, not the
particular compositions disclosed by Zehler ‘179, that Appellant seeks to
incorporate. For this reason, Appellant’s arguments directed to the various
disclosures of Zehler ‘179 related to the “monovalent” and “divalent” acids
are not persuasive.
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Application 10/051,938

Additionally, Zehler ‘179 is directed to “lubricants, lubricant base
stocks, refrigerant working fluids including lubricants, along with primary
heat transfer fluids and methods of using these materials” (Zehler ‘179,
col. 1, ll. 6-9). Zehler ‘179 further describes that “the lubricants and
lubricant base stocks are particularly suitable for use with substantially
chlorine-free, fluoro-group-containing organic refrigerating heat transfer
fluids such as tetrafluoroethanes” (Zehler ‘179, col. 1, ll. 9-12). The context
of the Zehler ‘179 patent is directed to lubricants and refrigerant working
fluids, not hydraulic fluids that are used in shock absorbers as is the
currently claimed invention. This further supports our determination that
Appellant’s incorporation in his Specification of Zehler ‘179 is with respect
to only the method of making the esters, not the particular compositions.
Moreover, we note that there is no indication from Zehler ‘179 alone
or taken with Appellant’s originally filed Specification that Appellant had
possession of the mixture of monocarboxylic acids and dicarboxylic acid as
claimed. In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972). We
observe that Zehler ‘179 generically describes divalent and monovalent
acids (Zehler, col. 3, ll. 21-29, 40-55). However, as the Examiner notes, we
find no disclosure of the particular combination the Appellant is now
claiming (i.e., “two or more C5, C6, C7, C8 and C9 linear monocarboxylic
acids” and a dicarboxylic acid). In this latter regard, we observe that Table 3
of Zehler ‘179 discloses a combination of C5 and C4 monocarboxylic acids
(i.e., pentanoic acid, 3-methyl butanoic acid, and 2-methyl butanoic acid)
with a dicarboxylic acid (either adipic or azelaic acid). However, this
disclosure does not support Appellant’s claimed mixture of “two or more
C5, C6, C7, C8 and C9 mono carboxylic acids” with a dicarboxylic acid.
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Furthermore, given the factual scenario present in this appeal, we find
that the Examiner’s application of the holding in In re Smith, 458 F.2d 1389,
173 USPQ 679 (CCPA 1972) to be appropriate. Zehler ‘179 discloses a
genus of compounds (i.e., monovalent and divalent acids) with a specific
example to a species within the genus presented in Table 3 of Zehler ‘179
(i.e., mixture of penatnoic acid, 3-methyl butanoic acid, and 2-methyl
butanoic acid with either adipic or azealaic acid). Appellant now claims a
subgenus (i.e., monocarboxylic acids and dicarboxylic acid). We find
proper the Examiner’s determination that the disclosure in Zehler ‘179 of a
genus (i.e., monvalent and divalent acids) and a species (i.e., pentanoic acid,
butanoic acid, adipic acid and azelaic acid) within a subgenus (i.e.,
monocarboxylic and dicarboxylic acids) is not necessarily a sufficient
description of the subgenus. Smith, 458 F.2d at 1395, 173 USPQ at 684. As
discussed previously, we find no disclosure of the mixture of “two or more
C5, C6, C7, C8 and C9 monocarboxylic acids” with a dicarboxylic acid in
Appellant’s original description.
As the Examiner has established via reasoning why one of ordinary
skill in the art would not have considered Appellant’s particular claimed
combination of monocarboxylic acids and dicarboxylic acid to be described
in the originally filed Specification, a prima facie case of lack of written
description has been made. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996). To overcome a prima facie case of lack of
written description, an applicant must show that the invention as claimed is
adequately described to one skilled in the art. Id. at 1584-85. After the
Applicant has submitted evidence or argument in response to the Examiner’s
prima facie case, patentability is determined on the totality of the record by a
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preponderance of the evidence with due consideration to persuasiveness of
argument. Id. at 1585.
In light of the foregoing discussion, it is apparent that the totality of
the record demonstrates that Appellant has not met his burden of showing
that the claimed combination of monocarboxlic acids and dicarboxylic acid
was adequately described to one skilled in the art. Accordingly, the
Examiner’s rejection for lack of written description is sustained.
We affirm the Examiner’s rejection of claim 46-48, 62-64 and 76
under § 112, 1st paragraph as violating the written description requirement.
REMAND
We remand this application to the Examiner to resolve an internal
conflict between allowed claims 53 and 79-80 and rejected claims 40, 56,
70, 78, 82 and 84.
The Examiner indicated that claims 53 and 79-80 are allowed. We
note that independent claim 53 is identical to claim 38 with the exceptions
that claim 53 recites “trimethylolpropane” instead of “a hindered polyol”
and the mixture of monocarboxylic acids in claim 53 is not literally
described as having “two or more” C5 to C9 linear monocarboxylic acids.
In effect, claim 53 is narrower than claim 38 only in respect to the “hindered
polyol” being trimethylolpropane.2 Because the Examiner did not include a

2 Though claim 53 does not recite that the mixture of monocarboxlic acids
comprises “two or more” of the C5 to C9 linear monocarboxylic acids, as
claim 38 does, such language (i.e., “two or more”) appears inherently to be
present in claim 53. The recitation of “a mixture of C5, C6, C7, C8 and C9
linear monocarboxylic acids” in claim 53 may reasonably be construed as
necessarily requiring “two or more” of the recited monocarboxylic acids
because a “mixture” requires at least two components.
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Application 10/051,938

“Reasons for Allowance” in the prosecution history, we surmise that
independent claim 53 and its dependent claims 79-80 were allowed because
the polyol was limited to “trimethylolpropane.”
Dependent claims 40, 56, 70, 78, 82 and 84 all recite that the hindered
polyol is “trimethylolpropane.” Claims 40, 56, 70, 78, 82 and 84 are all
rejected under § 103(a) over Duncan in view Funkhouser. At least in the
case of claim 40, the “hindered polyol” of claim 38 is limited to
“trimethylolpropane”, such that the scope of claim 40, which depends on
claim 38, is identical to allowed claim 53. Since at least claim 40 is rejected
under § 103(a) over Duncan in view of Funkhouser, it appears that claims 53
and 79-80 which require “trimethylolpropane” as the polyol should be
rejected similarly.
Duncan appears to teach a biodegradable polyol ester made from a
trimethyolpropane and a mixture of C7 and C8 linear monocarboxylic acids
(See, Table 8, “TMP/7810”). Based on Duncan’s teaching to use the
disclosed fluids as hydraulic fluids, it would have been prima facie obvious
to combine Duncan’s “TMP/7810” fluid with Funkhouser’s conventional
hydraulic shock absorber to create a more environmentally friendly shock
absorber.
From the foregoing, the allowed claims 53 and 79-80 appear to be
unpatentable under § 103(a) over Duncan in view of Funkhouser.
Therefore, upon return of this application to the jurisdiction of the
Examining Corps, the Examiner must determine whether claims 53 and 79-
80 are unpatentable over Duncan in view of Funkhouser under 35 U.S.C.
§ 103(a) and make this determination of record consistent with current
examining practice and procedure.
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This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1)
(2006) is not made for further consideration of a rejection. Accordingly,
37 C.F.R. § 41.50(a)(2) (2006) does not apply.
CONCLUSION
We have affirmed the § 103(a) rejection of claims 38-40, 43, 52,
54-56, 59, 67-70, 73, 77-78 and 81-84 over Duncan in view of Funkhouser.
We have affirmed the § 112, 1st paragraph rejection of claims 46-48,
62-64 and 76 as lacking written description.
The Examiner’s decision is affirmed and the application is remanded
to the Examiner.
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 & REMANDED

tf/clj

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