Ex Parte Han et al

Patent Trial and Appeal BoardAug 30, 2017

13990922 (P.T.A.B. Aug. 30, 2017)

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. 13/990,922 05/31/2013 Suh Joon Han DOW-36781-A-US 2358 29423 7590 09/01/2017 Husch Blackwell LLP/ The Dow Chemical Company 555 East Wells Street, Suite 1900 Milwaukee, WI53202-3819 EXAMINER ASDJODI, MOHAMMADREZA ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): jere.polmatier@huschblackwell.com ptomailbox @ whdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUH JOON HAN, PETER C. DREUX, PAUL J. CARONIA, and DANIEL WITTE Appeal 2017-002696 Application 13/990,922 Technology Center 1700 Before MARKNAGUMO, MICHAEL P. COLAIANNI, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We cite the Specification (“Spec.”) filed May 31, 2013; Non-Final Office Action (“Non-Final Act.”) dated January 20, 2016; Appellants’ Appeal Brief (“Br.”) dated March 29, 2016; and Examiner’s Answer (“Ans.”) dated October 7, 2016. 2 Appellants identify Union Carbide Chemicals & Plastics Technology LLC, a subsidiary of the Dow Chemical Company, as the real party in interest. Br. 3. Appeal 2017-002696 Application 13/990,922 BACKGROUND The subject matter on appeal relates to methods for removing impurities from natural ester oil-based fluids. Spec. 11. Claim 1 illustrates the subject matter involved in this appeal, and is reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A method for manufacturing natural ester oil-based electrical insulation fluids, the method comprising the steps of: (A) contacting a refined, bleached and deodorized (RBD) natural ester oil, or a refined, bleached, winterized and deodorized (RBWD) natural ester oil, with a synthetic silicate absorbent comprising an alkali and/or alkaline earth metal, and (B) separating the absorbent from the oil. REJECTION Claims 1—10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Claiborne3 and Enzler.4 DISCUSSION Appellants argue the claims as a group, focusing on a recitation that is common to each of the independent claims. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as representative, with claims 2—10 standing or falling with claim 1. Appellants do not dispute the Examiner’s finding that Claiborne discloses a method that comprises all of the features recited in claim 1, except that Claiborne uses a natural clay absorbent rather than the recited synthetic silicate absorbent. Compare Non-Final Act. 3 with, Br. 7—16. 3 WO 97/49100 Al, published December 24, 1997 (“Claiborne”). 4 W02006128734 Al, published December 7, 2006 (“Enzler”), as translated. 2 Appeal 2017-002696 Application 13/990,922 Claiborne teaches purifying RBD5 oleic vegetable oils with neutral clay particles to remove polar compounds and acidic materials. Claiborne 8—9. The Examiner finds that Enzler discloses purifying oils with synthetic magnesium silicate, and that one of ordinary skill would have had a reason to replace or supplement Claiborne’s clay absorbent with Enzler’s silicate absorbent to enhance the absorption of impurities. Non-Final Act. 3. Appellants argue that Enzler is non-analogous art because the problem faced by Appellants is the removal of impurities from natural oils to obtain dielectric fluids, whereas Enzler is concerned with removing degradation products and reaction products from used frying oil. Br. 9—11. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; or (2) if the reference is not within the field of the inventor’s endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is concerned. In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc. . . ., directs us to construe the scope of analogous art broadly”). “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 5 Refined, bleached and deodorized. Claiborne 8; Spec. 1 6. 3 Appeal 2017-002696 Application 13/990,922 obvious uses beyond their primary purposes.” KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007). In this case, we are persuaded that Enzler is reasonably pertinent to the particular problem with which the inventor is concerned. Both Appellants’ invention and Enzler concern using absorbent material to remove acids and polar compounds from natural oils. See Spec. ]Hf 4—5; Enzler 8 (“With the absorber material used here[,] polar compounds and . . . free fatty acids ... are bound and thus removed . . .”). Enzler expressly states that the disclosed use of silicate absorber is not limited to edible oils, but may be used “for all types of contaminated oils.” Enzler 4. Claiborne likewise teaches that the purpose of the absorber in purifying RBD oil is to remove “polar compounds and acidic materials.” Claiborne 9,11. 14—20. Appellants also argue that neither Claiborne nor Enzler suggests that Enzler’s magnesium silicate absorbent would be an effective replacement for the natural clay absorbent in Claiborne’s method. Br. 11—12. However, the Examiner provides a sufficient reason to use magnesium silicate in Claiborne’s process, based on the teachings of Enzler. “[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., Inc. 550 U.S. 398, 401 (2007). Moreover, Appellants do not address the Examiner’s rationale that one skilled in the art would have had a reason to supplement Claiborne’s clay absorbent with Enzler’s silicate absorbent to enhance the desired purification. Appellants point to the examples reported at Figures 2 and 4 of the Specification as evidence of unexpected results. Br. 13—15. There, Appellants depict power factor and neutralization number values obtained by 4 Appeal 2017-002696 Application 13/990,922 purification of oil using various clay absorbents and two commercially- available magnesium silicate absorbents. To establish the existence of unexpected results, Appellants must establish (1) that there actually is a difference between the results obtained through the claimed invention and those of the closest prior art and (2) that the difference actually obtained would not have been expected by a person of ordinary skill in the art at the time of the invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citing In re Klosak, 455 F.2d 1077 (CCPA 1972); In reD’Ancicco, 439 F.2d 1244 (CCPA 1971)). In this case, Appellants do not point to any evidence that, at the time of the invention, a person of ordinary skill in the art would have regarded the difference in power factor or neutralization number as unexpected. Moreover, the information reported in Figures 2 and 4 is limited to magnesium silicate absorbents, whereas claim 1 encompasses any synthetic silicate absorbent comprising an alkali or alkaline earth metal. Appellants’ data, therefore, is not commensurate in scope with claim 1. On this appeal record and for the foregoing reasons, we are not persuaded that the Examiner reversibly erred in rejecting claim 1 as obvious over Claiborne and Enzler. Accordingly, the Examiner’s rejection is sustained. DECISION The Examiner’s decision rejecting claims 1—10 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED 5