Ex Parte Malfer et al

Patent Trial and Appeal Board

Jan 31, 2017

11639200 (P.T.A.B. Jan. 31, 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.
11/639,200 12/15/2006 Dennis J. Malfer 71960.US (7799-AC-US) 4475
64091 7590 02/02/2017
AFTON CHEMICAL CORPORATION
LUEDEKA NEELY GROUP
P.O. BOX 1871
KNOXVTT.T.E, TN 37901
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
LNG.PATENT@gmail.com
docketing @ luedeka.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS J. MALFER and MAY D. THOMAS
Appeal 2015-001558
Application 11/639,200
Technology Center 1700
Before TERRY J. OWENS, ELIZABETH M. ROESEL, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—6, 14, 15, 17, 18, 25—33, and 41—53. Because at
least some of those claims have been twice rejected, we have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In this decision, we refer to the Non-Final Office Action mailed August 13,
2013 (“Non-Final Act.”), the Appeal Brief filed May 12, 2014 (“App. Br.”),
the Examiner’s Answer mailed September 17, 2014 (“Ans.”), and the Reply
Brief filed November 14, 2014 (“Reply Br.”).
2 Appellants identify the real party in interest as Afton Chemical Corp. App.
Br. 3.
Appeal 2015-001558
Application 11/639,200
The subject matter on appeal relates to fuel compositions comprising
Mannich base condensation products that are effective in controlling engine
deposits in internal combustion engines. Spec.311. Claim 1, reproduced
below with key disputed limitations italicized, is illustrative of the claims on
appeal.
1. A fuel additive composition, comprising
(a) a substantially pure Mannich reaction product obtained by
reacting (i) a polyamine having primary amino groups selected
from the group consisting of ethylene diamine, 1,3-diamino
propane and a 1,2-diaminocycloaliphatic (ii) a hydrocarbyl-
substituted hydroxyaromatic compound, and (iii) an aldehyde,
wherein the reaction is conducted using a molar ratio of
(i):(ii):(iii) of approximately 1:2:3 to provide the substantially
pure Mannich reaction product having a purity of at least about
80%; and
(b) a liquid carrier.
App. Br. 31 (Claims Appendix).
Each of independent claims 15, 17, and 27 includes the recitation that
the reaction is conducted using a molar ratio of (i) polyamine :
(ii) hydrocarbyl-substituted hydroxyaromatic compound : (iii) aldehyde of
approximately 1:2:3 to obtain a Mannich reaction product “having a purity
of at least about 80%.”
REJECTIONS ON APPEAL
1. Claims 1,3,5, 6, 14, 42, 43, and 50—52 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Ahmadi
(US 6,511,519 Bl, issued Jan. 28, 2003) (hereinafter “Ahmadi”);
3 Application 11/639,200, Mannich Detergents for Hydrocarbon Fuels, filed
December 15, 2006 (hereinafter “Spec.”).
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Application 11/639,200
2. Claims 15, 17, 18, 25, 26, 27, 28, 30, 32, 33, 41, 4A49, and 53
stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Ahmadi in view of Tramontini, Mannich Bases Chemistry
and Uses 48 (1994) (hereinafter “Tramontini”); and
3. Claims 2, 4, 29, and 31 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ahmadi in view of Gutierrez et al.
(US 4,906,252, issued Mar. 6, 1990) (hereinafter “Gutierrez ’252”)
in view of Gutierrez et al. (US 5,017,299, issued May 21, 1991).
DISCUSSION
Appellants argue claims 1—6, 14, 15, 17, 18, 25—33, and 41—53 in the
following subgroups: 1) claims 1, 3—6, 14, 27, 28, 30-32, 41—43, 48, and
49; 2) claims 2 and 29; 3) claims 15, 17, 18, 25, 26, 33, and 44^47;
4) claim 50; 5) claims 51 and 52; and 6) claim 53. App. Br. 9, and 15—29.
We address each group in turn.
Subgroup 1 - Claims 1, 3—6, 14, 27, 28, 30—32, 41—43, and 48
Appellants’ arguments in subgroup 1 focus on the recitation that “the
reaction is conducted using a molar ratio of (i):(ii):(iii) of approximately
1:2:3” to obtain a Mannich reaction product “having a purity of at least
about 80%.” We will focus our discussion regarding subgroup 1 on
representative independent claim 1 because it contains the argued limitations
that are also present in the other independent claim, claim 27, included in
this subgroup. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue that the cited references fail to describe or suggest
the claimed ratio of approximately 1:2:3. App. Br. 16, 18. Appellants’
argument focuses on the Ahmadi reference. See id. at 18—19.
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Application 11/639,200
Ahmadi discloses a Mannich condensation product of (1) a high
molecular weight alkyl-substituted hydroxyaromatic compound, (2) an
amine which contains an amino group having at least one active hydrogen,
and (3) an aldehyde, where the respective molar ratio of reactants is 0.1—10 :
1.0 : 0.1—10.4 Ahmadi 4:32-41. Although Appellants focus on Ahmadi’s
broader molar ratio of reactants as a reason why Ahmadi fails to describe the
claimed molar ratio of reactants, Appellants admit that Ahmadi teaches a
preferred Mannich reaction product formed by reacting an ethylene
polyamine, alkylphenol, and a formaldehyde in a molar ratio of 0.5—2.0 : 1.0
: 1.0—3.0.5 App. Br. 18—19; Ahmadi 6:26—51. Appellants’ claimed molar
ratio of approximately 1:2:3 is the same as a molar ratio of 0.5 : 1.0 : 1.5,
which falls within the narrower range of molar ratios disclosed in Ahmadi.
Ahmadi 6:49.
We are not persuaded by Appellants’ argument that that the broader
range of molar ratios disclosed in Ahmadi weighs against the Examiner's
conclusion of obviousness (App. Br. 18—19). It is well-established that a
prima facie case of obviousness exists when, as in the present case, the
claimed ranges overlap the ranges disclosed in the prior art. In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness.”). Nor
do we agree with Appellants that the facts in the present case are analogous
4 The ranges for each reactant in Ahmadi’s molar ratio have been reordered
as (2):(1):(3) to correspond with the order of reactants recited in the claimed
molar ratio of (i):(ii):(iii).
5 Reordered to correspond with the order of reactants recited in the claimed
molar ratio.
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Application 11/639,200
to the facts and circumstances in Ex Parte Hasegawa, Appeal 2010-004304
(BPAI 2011)6 and In re Antonie, 559 F.2d 618 (CCPA 1977). App. Br. 17.
In both those cases, the cited prior art did not disclose the claimed ratio.
Hasegawa, Appeal 2010-004304 at 4 (explaining that the hardness disclosed
by the prior art is clearly not reflective of both types of hardness claimed in a
particular ratio range); see also Antonie, 559 F.2d at 619 (explaining that the
prior art did not disclose the claimed ratio of tank volume to contactor area).
This is not the case here where the claimed ratio falls within the narrow
range of molar ratios disclosed in Ahmadi (6:44—51).
Appellants argue that it would not have been obvious to arrive at the
claimed molar ratio using routine optimization because the Examiner has not
established that molar ratio of the reactants in a Mannich condensation
reaction was recognized in the prior art as a results effective variable
affecting the purity of the tertiary amine reaction product. See App. Br. 19-
21.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. The Examiner need only establish that the molar ratio
of the reactants is recognized in the prior art as one which would affect the
results. Antonie, 559 F.2d at 620. The Examiner here finds that Ahmadi
discloses that the Mannich reaction product, which is affected by the molar
ratio of the reactants, prevents and controls engine deposits. Ans. 9, 11. The
Examiner’s finding is supported by a preponderance of the evidence.
Ahmadi reaction product is used for the very same purpose as Appellants’
reaction product— preventing and controlling engine deposits. Compare
6 As Appellants recognize, Hasegawa is not a precedential case and thus is
of limited guidance to the issues presented in this case. App. Br. 16.
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Application 11/639,200
Ahmadi Abstract, 11:34-44, and 1:51—53 (stating that “Mannich
condensation products are known in the art as fuel additives for prevention
and control of engine deposits.”) with Spec. H 1, 5. Ahmadi not only
discloses a broad range of molar ratios for its reactants, but it also discloses
narrower ranges, and its examples use even more specific molar ratio of its
reactants, acknowledging that the molar ratio of the reactants affects the
resulting product. Ahmadi 4:32-41, 6:44—51, and 13:10-14; see also
Declaration under 37 C.F.R. § 1.132 of May Thomas executed November 9,
2012 (hereinafter “Thomas Declaration”) H 9—11 (describing that it was
conventional in the art to vary the reactant mix to affect the product of the
reaction, e.g., to product reaction products with primary and second amines).
Appellants contend that they have rebutted any prima facie case of
obviousness by showing unexpected results and criticality of the claimed
ratio. App. Br. 21. Specifically, Appellants point to the data in the Thomas
Declaration as evidence that there is “a significant different in the resulting
Mannich products when different ratios are used.” App. Br. 22 (citing
Thomas Declaration 113 (Table 1), 123, Appendix A, and Appendix B).
We have considered the Thomas Declaration, and we agree with the
Examiner that the evidence is not persuasive because it is not commensurate
in scope with the claims on appeal. The Examiner correctly finds that the
evidence does not supply enough data points to compare with the claimed
molar ratio of 1:2:3 for reactants (i):(ii):(iii). Ans. 15. Likewise,
independent claim 1 (as well as claim 27) is broad and is not limited to using
the specific hydrocarbyl-substituted hydroxyl aromatic and aldehyde
compounds used in the reactions presented in the Thomas Declaration.
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Additionally, Appellants’ evidence does not appear to compare the
claimed molar ratio of reactants with the closest molar ratio of reactants
disclosed in the prior art. The Thomas Declaration compares a molar ratio
of reactants (i):(ii):(iii) of 1:1:1 with the claimed molar ratio of 1:2:3. See
Thomas Declaration 113 (Table 1), H 16—17, Appendix A and Appendix B.
Although a molar ratio of 1:1:1 falls within the preferred molar range of
reactants disclosed at column 6, lines 44—51 of Ahmadi’s disclosure,
Ahmadi’s examples teach using a molar ratio of the reactants (2):(1):(3) of
1:1:2, not 1:1:1. See Ahmadi 13:10-14.
In sum, for the reasons stated in the Non-Final Office Action, the
Examiner’s Answer, and above, a preponderance of the evidence, taking into
account Appellants’ evidence of unexpected results, favors the Examiner’s
conclusion of obviousness as to claims 1, 3—6, 14, 27, 28, 30-32, 41—43, 48.
Accordingly, we sustain rejection of claims 1, 3—6, 14, 27, 28, 30-32, 41—
43, 48 under 35 U.S.C. § 103(a) over Ahmadi alone or in view of
Tramontini, or Gutierrez ’252 and Gutierrez ’299.
Subgroup 2 - Claims 2 and 29
Claim 2 depends from claim 1, and claim 29 depends from claim 27.
Both claims 2 and 29 require the polyamine (i) in claims 1 and 27 to
comprise 1,2-diaminocyclohexane.
Appellants argue that neither Ahmadi nor Gutierrez ’252 and
Gutierrez ’299 disclose or suggest 1,2-diaminocyclhexane as a reactant in a
Mannich condensation reaction. App. Br. 24—25.
Appellants’ argument is persuasive. The Examiner finds that
Gutierrez ’299 teaches at column 12, lines 14—28 that 1,2-diaminoethane and
1,2-diaminocyclohexane are known equivalents for use as an amine reactant
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Application 11/639,200
in Mannich condensation reactions. Ans. 13, 17. We have reviewed the
portion of Gutierrez ’299 relied upon by the Examiner, but find no
disclosure of 1,2-diaminocyclohexane. Accordingly, we do not sustain the
rejection of claims 2 and 29 under 35 U.S.C. § 103(a) over Ahmadi in view
of Gutierrez ’252 and Gutierrez ’299.
Subgroup 3 — Claims 15, 17, 18, 25, 26, 33, and 44^47
Appellants’ arguments in subgroup 3 focus on the recitation that “(i) a
polyamine having primary amino groups that is capable of forming a
substantially pure intermediate . . . having a 5-member or 6-member
nitrogen-containing heterocyclic moiety.” We will focus our discussion
regarding subgroup 3 on representative independent claim 15 because it
contains the argued limitations that are also required by the other
independent claims, claims 17 and 26, included in this subgroup. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that none of the cited references describes or
suggests a substantially pure intermediate having a 5-member or 6-member
nitrogen containing heterocyclic moiety in the Mannich condensation
reaction. App. Br. 25.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. Ahmadi does not explicitly state that the disclosed
reactants form a substantially pure intermediate having a 5-member or 6-
member nitrogen containing heterocyclic moiety. Ahmadi does, however,
teach Mannich condensation products formed by reacting an ethylene
polyamine and an alkylphenol, which are the same reactants described as
being used in Appellants’ Mannich condensation reaction, in a molar ratio
that encompasses the claimed molar ratio of reactants (i) and (ii). Compare
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Ahmadi 6:44—51 with Spec. 170 and original claim 16. Thus, a
preponderance of the evidence supports the Examiner’s finding that the
ethylene polyamine and alkylphenol reactants, when used in a molar ratio of
1:2, in Ahmadi’s Mannich condensation reaction would form a 5-member or
6-member nitrogen containing heterocyclic moiety. Non-Final Act. 8—9.
Accordingly, we sustain the rejection of claims 15, 17, 18, 25, 26, 33, and
44-47 under 35 U.S.C. § 103(a) over Ahmadi in view of Tramontini.
Subgroup 4 — Claim 50
Claim 50 depends from claim 1 and requires that the substantially
pure Mannich reaction product includes a tertiary amine.
Appellants argue that there is no suggestion in the cited references as
to why one skilled in the art would seek out a product having tertiary
amines. App. Br. 26.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. Ahmadi teaches a Mannich condensation reaction
using the same reactants in the same ratios as recited in Appellants’ claims.
Compare Ahmadi 6:44—51 with Spec. 170 and original claim 16; see also
Thomas Declaration 122 (admitting that prior art methods which do not
utilize a polyamine, a hydrocarbyl-substituted hydroxyaromatic compound,
and an aldehyde in a ratio of approximately 1:2:3 results in Mannich
products having a mixture of primary, secondary, and tertiary amines)
(emphasis added). Accordingly, a preponderance of the evidence supports
the Examiner’s finding that it would be expected that Ahmadi’s reaction
would produce a substantially pure Mannich reaction product that includes a
tertiary amine. Ans. 18. Accordingly, we sustain the rejection of claim 50
under 35 U.S.C. § 103(a) over Ahmadi.
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Subgroup 5 — Claims 51 and 52
Claims 51 and 52 ultimately depend from claim 1. Both claims 51
and 52 recite specific structures of the claimed substantially pure reaction
product recited in claim 1.
Appellants argue that none of the references describe or suggest the
specific chemical structures recited in claims 51 and 52. App. Br. 28.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. Ahmadi teaches a Mannich condensation reaction
using the same reactants in the same ratios as recited in Appellants’ claims.
Compare Ahmadi 6:44—51 with Spec. 170 and original claim 16; see also
Ahmadi 6:52—56 and 7:22—25 (disclosing polyisobutylphenol and alkyl-
substituted derivatives of cresol as examples of useful alkyl-substituted
hydroxyaromatic reactants, with polyisobutylphenol being a preferred
reactant), Ahmadi 8:21—29 (disclosing ethylenediamine as a preferred
polyamine reactant), and Ahmadi 8:59-64 (disclosing formaldehyde as an
example of a useful aldehyde reactant). Accordingly, a preponderance of the
evidence supports the Examiner’s finding that it would be expected that
Ahmadi’s reaction would produce a substantially pure Mannich reaction
product having the structures recited in claims 51 and 52. Ans. 18.
As a product-by-process claim, determination of patentability is based
on the product itself, even though the claim is limited by a process. See In
re Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985). Because “the Patent Office
is not equipped to manufacture products by the myriad of processes put
before it and then obtain prior art products and make physical comparisons
therewith,” a prima facie case of obviousness for a product-by-process claim
is established “when the prior art discloses a product which reasonably
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appears to be either identical with or only slightly different than a product
claimed in a product-by-process claim.” In re Brown, 459 F.2d 531, 535
(CCPA 1972). The burden then shifts to Appellant “to prove that the prior
art products do not necessarily or inherently possess the characteristics of his
claimed product.” Thorpe at 698 (citing In re Fitzgerald, 619 F.2d 67, 70
(CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
Appellants are in the best position to demonstrate a patentable
distinction between the structures of Ahmadi’s Mannich reaction product
and the reaction product of claims 51 and 52. On the record before us,
Appellants have not presented sufficient evidence demonstrating that
Ahmadi’s Mannich reaction products would not have the specific structures
recited in claims 51 and 52.
Accordingly, we sustain the rejection of claims 51 and 52 under
35 U.S.C. § 103(a) over Ahmadi.
Subgroup 6 — Claim 53
Claim 53 depends from claim 33. Claim 33 recites a method of
controlling engine deposits in an internal combustion engine comprising
operating the engine with the fuel composition of claim 26, which
comprises, inter alia, a Mannich reaction product according to claim 17.
The method of claim 53 requires that the substantially pure Mannich
reaction product provides improved intake valve deposit (IVD) performance
and improved port fuel injector performance when used in the fuel
composition compared to a fuel composition which does not contain the
substantially pure Mannich reaction product.
Appellants argue that there is no factual evidence in the record to
reasonably support the Examiner’s determination that Ahmadi teaches or
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suggests that its fuel additive composition comprises a substantially pure
Mannich reaction product that provides improved IVD performance and port
fuel injector performance at the same time. See App. Br. 29.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. The Examiner finds that Ahmadi’s teaches a Mannich
condensation reaction using the same reactants in the same amounts as
recited in Appellants’ claims. Non-Final Act. 5; see also Ahmadi 6:44—51
and Spec. 170 and original claim 16. The Examiner also finds that Ahmadi
teaches that its fuel additive composition, which comprises a Mannich
condensation product, provides excellent control of engine deposits,
particularly engine intake system deposits, such as intake valve deposits.
Ans. 11 (citing Ahmadi Abstract). Accordingly, it would be expected
Ahmadi’s Mannich reaction product to be substantially pure and thus,
provide improved IVD performance and improved port fuel injector
performance when used in its fuel additive composition. Accordingly, we
sustain the rejection of claim 53 under 35 U.S.C. § 103(a) over Ahmadi in
view of Tramontini.
DECISION
For the above reasons, we affirm the Examiner’s rejections under
35 U.S.C. § 103(a) of claims 1, 3, 5, 6, 14, 42, 43, and 50-52 over Ahmadi,
claims 15, 17, 18, 25, 26, 27, 28, 30, 32, 33, 41, 44-49, and 53 over Ahmadi
in view of Tramontini, and claims 4 and 31 over Ahmadi in view of
Gutierrez ’252 and Gutierrez ’299. We reverse the Examiner’s rejection
under 35 U.S.C. § 103(a) of claims 2 and 29 over Ahmadi in view of
Gutierrez ’252 and Gutierrez ’299.
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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-IN-PART
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