Innospec Limited

Patent Trials and Appeals Board

Jun 25, 2021

2020003296 (P.T.A.B. Jun. 25, 2021)

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.
15/980,151 05/15/2018 Andrea Sneddon 27073-45CON 4485
26486 7590 06/25/2021
BURNS & LEVINSON, LLP
125 HIGH STREET
BOSTON, MA 02110
EXAMINER
HINES, LATOSHA D
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
06/25/2021 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@burnslev.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA SNEDDON
Appeal 2020-003296
Application 15/980,151
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s February 7, 2019 decision to finally reject claims 17–33 (“Final
Act.”). We have jurisdiction under 35 U.S.C. § 6(b). As noted by Appellant
(Appeal Br. 3), we issued a decision on March 15, 2018 in connection with
the parent of the application presently on Appeal (“Prior Decision”).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Innospec
Limited (Appeal Br. 3).
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Application 15/980,151

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to an additive for bio-fuels, which
are derived in whole or in part from animal or vegetable oil (“Bx fuels”)
(Spec. 1:3–7). At temperatures above the cloud point (“CP”) of Bx fuels,
precipitates are said to form, thereby blocking filters in distribution systems
and vehicles (id. at 1:13–15). The appealed claims are directed to a method
of improving the filterability of Bx fuels comprising the addition of an
additive to such fuels. Claim 1, reproduced below from the Claims
Appendix, is illustrative of the claimed subject matter:
17. A method of improving the filterability of a Bx fuel above
the cloud point of the Bx fuel, the method comprising adding to
the fuel an additive which is the reaction product of (i) a
compound containing the segment –NR1R2 where R1 represents
a group containing from 4 to 44 carbon atoms and R2 represents
a hydrogen atom or a group R1, and (ii) a carboxylic acid having
from 1 to 4 carboxylic acid groups or an acid anhydride or acid
halide thereof; wherein the group R1 is a predominantly straight
chain, substantially saturated hydrocarbyl group comprising
from 10 to 24 carbon atoms; and the carboxylic acid is an
optionally substituted benzene dicarboxylic acid thereby forming
a composition; wherein upon passing the composition through a
filter at a temperature above the cloud point of the Bx fuel, the
composition has a reduced filter blocking tendency as compared
to the Bx fuel alone.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Davies et al. US 5,743,923 April 28, 1998
Dillworth et al. US 5,958,089 September 28, 1999
Eisenbeis et al. US 2009/0188159 A1 July 30, 2009
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REJECTION
Claims 17–33 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Eisenbeis, Davies, and Dillworth.
DISCUSSION
The dispositive issue for this appeal is whether, based on the cited art,
it would have been obvious to seek to improve the filterability of a Bx fuel
above the cloud point of the Bx fuel using the claimed additive. In
particular, the Examiner finds that Eisenbeis discloses a Bx fuel which
includes the claimed additive (Final Act. 3–4). The Examiner further finds
that Eisenbeis does not disclose storing the Bx fuel at a temperature above
the fuel’s CP temperature (Final Act. 4).2 However the Examiner further
finds that Davies discloses storing Bx fuels at temperatures below their
CFPP (cold filter plugging point) temperatures, which is necessarily also
below their CP temperatures (Final Act. 4–5). According to the Examiner:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to store the Bx fuel above the cloud
point temperature as taught by Davies in the cold filtering
method of Eisenbeis in order to increase the flow ability of
fuels at low temperatures during cold filtering of fuels (see
column I lines 50-60 of Eisenbeis), and to reduce the haziness
and precipitation from the composition.
(Final Act. 5). The Examiner further finds that Dillworth discloses a fuel
additive composition comprising a nitrogen compound and a carboxylic acid
and teaches that it can be used above a fuel’s CP temperature (Final Act. 5).
The Examiner determines that it would have been obvious “to test the

2 We note that claim 17 does not recite storing the Bx fuel at any specific
temperature.
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composition of Eisenbeis and Davies, through the filtering method of
Dillworth [i.e. above the CP temperature], in order to measure the
filterability of the composition at temperatures above their cloud point”
(Final Act. 6).
Appellant argues that Eisenbeis and Davies are directed to improving
the flowability of diesel fuels below their CP temperatures, and provide no
guidance or suggestion to act at temperatures above the CP temperatures
(Appeal Br. 5–6). Appellant further argues that Dillworth does not relate to
Bx fuels, is instead directed to petroleum based fuels, in particular to
problems caused by additives in petroleum-based fuels resulting in
precipitates at low temperatures, and that “none of Eisenbeis, Davies or
Dillworth, either separately or in combination, teach or suggest treating Bx
fuel above the CP temperature to improve filterability” (Appeal Br. 7–8).
In response, the Examiner finds that Eisenbeis teaches that the treated
fuel is at a temperature above the CP temperature for at least some period of
time (Ans. 9, citing Eisenbeis ¶¶ 144 and 149). We agree with the Examiner
that Eisenbeis plainly discloses a composition containing the Bx fuel and the
claimed additive at a temperature above the cloud point temperature of the
fuel.
Appellant contends that the art does not suggest reduced filterability
of Bx fuels at temperatures above their cloud points (Reply Br. 3).
However, the claim language does not require an affirmative step of filtering
the Bx/additive composition at an above-CP temperature. Instead, the
method of claim 17 only recites adding the additive to the Bx fuel. The final
clause of the claim 17—“wherein upon passing the composition through a
filter at a temperature above the cloud point of the Bx fuel, the composition
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has a reduced filter blocking tendency as compared to the Bx fuel alone”—
does not affirmatively recite a specific step of actually testing the Bx fuel
composition at a temperature above the cloud point. Instead, the claim
language simply recites that if the composition were passed through a filter
at a temperature above the cloud point of the Bx fuel, the composition would
have a reduced filter blocking tendency as compared to the Bx fuel alone.
As we discussed in the Prior Decision, there is no dispute that
Eisenbeis discloses each element of the additive composition and the Bx fuel
composition recited in claim 17.3 Appellant has not demonstrated that
Eisenbeis’ additive treated Bx fuel does not possess the claimed improved
filterability characteristic above the cloud point of the Bx fuel compared
with untreated Bx fuel. It is 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. In
this instance, Eisenbeis discloses the step of adding the claimed additive to
the Bx fuel. This is the identical process set forth in claim 17. Thus, the

3 As we also noted in the Prior Decision, the Examiner relies upon Davies
for disclosing storing treated Bx fuel above the cloud point temperature
(Final Act. 4). However, as stated above, Eisenbeis discloses adding the
claimed additive to a Bx fuel and having that composition at a temperature
above the cloud point. Accordingly, we find the relied upon teachings of
Davies duplicative of the teachings of Eisenbeis.
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burden of showing that Eisenbeis’s composition would not have the property
of “wherein upon passing the composition through a filter at a temperature
above the cloud point of the Bx fuel, the composition has a reduced filter
blocking tendency as compared to the Bx fuel alone” is on Appellant.
Appellant has not met this burden.
To the extent that Appellant argues that none of the cited art is
concerned with filterability above the cloud point, we note that, as stated in
the Prior Decision, it is not required that the applied prior art 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.”). In this case, Eisenbeis plainly teaches adding the
claimed additive to a Bx fuel at a temperature above the cloud point of the
fuel. Whether that was for the same or a different purpose than Appellant
does not control the outcome of this appeal, which is based on the specific
language of the claims.
Accordingly, we conclude the preponderance of the evidence of
record supports the Examiner’s rejection.
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CONCLUSION
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
17–33 103(a) Eisenbeis, Davies,
Dillworth
17–33

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED