Ex Parte Mead et al

Patent Trial and Appeal BoardNov 21, 2016

13846110 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/846,110 03/18/2013 27624 7590 11/23/2016 AKZO NOBEL INC AkzoNobel Legal Group 525 W. Van Buren Chicago, IL 60607 FIRST NAMED INVENTOR Stephen L. Mead 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ACA6331-US-2 7956 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 11/23/2016 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): ipani.patent@akzonobel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN L. MEAD, RODNEY LEE CRAVEY, and MOHAMMAD ABDUR RAHMAN Appeal2015-001715 Application 13/846, 110 Technology Center 1700 Before RICHARD E. SCHAFER, PETER F. KRATZ, and ROMULO H. DELMENDO, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from a final decision of the Primary Examiner to reject claims 1-3, 5, 9-20, and 22. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 The Appellants state that the real party in interest is "Akzo Nobel N.V." (Appeal Brief filed August 15, 2014, hereinafter "Appeal Br.," 3). 2 Appeal Br. 3; Final Office Action delivered electronically on February 27, 2014, hereinafter "Final Act.," 3---6; Examiner's Answer delivered electronically on September 18, 2014, hereinafter "Ans.," 3-17. Appeal 2015-001715 Application 13/846,110 BACKGROlH~D The current application is a continuation of Application 11/703,972 ('972 Application) filed February 8, 2007, now abandoned. In the '972 Application, we affirmed the Examiner's decision to reject claims similar to those before us in the current appeal because none of the Appellants' arguments raised on appeal were persuasive to identify a reversible error in the Examiner's rejection. 3 See Ex parte Mead, bJt:Q_~;_[L~--=-Â foia.uspto.gov/Foia/RetrievePdf?system=BP AI&flNm=fd2011012143-01- 15-2013-1, 3-5. Following further prosecution in the current application, the Appellants filed this new appeal based on new arguments (e.g., Appeal Br. 13) not raised in the previous appeal. Claim 1 is representative of the claimed subject matter and is reproduced from page 15 of the Appeal Brief (Claims Appendix) as follows: 1. A crude oil composition having improved low temperature properties comprising crude oil and an effective amount of a pour point depressant additive composition that comprises at least one pour point depressant additive of the formula I: wherein each R 1 is independently selected from H or a hydrocarbyl group having from 1 to 50 carbon atoms, R2, R3 and R 4 are each independently selected from hydrogen or a 3 In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving the Board's practice of reviewing a rejection for error based upon the issues identified by the appellant). 2 Appeal 2015-001715 Application 13/846,110 hydrocarbyl groups contammg from l up to 50 carbon atoms, m is an integer of from 1 to 50, n is an integer of from 0 to 50, and each R5 is independently selected from 0 and NH. REJECTION ON APPEAL Claims 1-3, 5, 9-20, and 22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Krull et al. (hereinafter "Krull")4 and Sweeney et al. (hereinafter "Sweeney") 5 (Ans. 3-17; Final Act. 3---6). DISCUSSION A dispositive issue in this appeal is whether the Examiner correctly determined that Krull would have suggested comonomeric units including the substituents R 1--CH--CHz- (where R 1 is Hor a hydrocarbyl group having from 1 to 50 carbon atoms) in the pour point depressant additive as specified in formula I of claim 1 (Appeal Br. 10-13; Ans. 7-8). Specifically, the Examiner found that when Krull refers to "abovementioned alkyl" in paragraph 113, Krull is not only referring to the "alkyl groups" that are present in structural unit (16) disclosed in paragraphs 105-112 but also "methyl" (as R22 and R23) in structural units (12) and (14) disclosed in paragraphs 98-100 (Ans. 8, 13). The Appellants dispute this finding, arguing that the alkyl substituents discussed in Krull' s paragraph 113 relate only to the alkyl radicals in bivalent structural unit (16) (Appeal Br. 11; Reply Brief filed November 17, 2014 at 4). We agree with the Appellants that the phrase "abovementioned alkyl" in Krull's paragraph 113 refers only to the alkyl groups discussed for structural formula (16). Krull's disclosure in paragraph 100 plainly limits 4 US 2001/0013196 Al, published August 16, 2001. 5 US 3,675,671, issued July 11, 1972. 3 Appeal 2015-001715 Application 13/846,110 R22 and R23 of structural units (12) and (14) to hydrogen and methyl only. A person skilled in the relevant art would not have read "abovementioned alkyl" in Krull's paragraph 113 to include "methyl" in paragraph 100 because, as argued by the Appellants (Appeal Br. 11 ), such an interpretation would render the clear teaching in the latter paragraph that "R22 and R23 ... are hydrogen or methyl" to be meaningless. To the extent that the Examiner is relying on our prior decision as establishing that Krull discloses the same comonomeric units as specified in claim 1, such reliance is misplaced (Ans. 6). Our prior decision rested on the key fact that "the Examiners' finding in terms of the structure of the terpolymers relative to 'formulae I' [was] undisputed." Mead at 4. By contrast, in the current appeal, the Appellants are contesting such a finding. We discern no reason why the Appellants could not continue prosecution of the same or similar claims based on new arguments or theories in a continuing application, as they have done so here. Because the other independent claims-namely, claims 11 and 18- recite the same substituents R1--CH--CHz-, our discussion of claim 1 applies equally to all claims on appeal. SUMMARY The Examiner's final decision to reject claims 1-3, 5, 9-20, and 22 is reversed. REVERSED 4