Ex Parte Malfer et alDownload PDFPatent Trial and Appeal BoardJan 31, 201711639200 (P.T.A.B. Jan. 31, 2017) Copy Citation 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.”). 2 Appeal 2015-001558 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. 3 Appeal 2015-001558 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. 4 Appeal 2015-001558 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. 5 Appeal 2015-001558 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. 6 Appeal 2015-001558 Application 11/639,200 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 7 Appeal 2015-001558 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 8 Appeal 2015-001558 Application 11/639,200 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. 9 Appeal 2015-001558 Application 11/639,200 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 10 Appeal 2015-001558 Application 11/639,200 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 11 Appeal 2015-001558 Application 11/639,200 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. 12 Appeal 2015-001558 Application 11/639,200 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 13 Copy with citationCopy as parenthetical citation