Ex Parte Siggelkow et al

Patent Trial and Appeal BoardMar 20, 2014

11149674 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/149,674 06/10/2005 Bettina Siggelkow 2004DE419 2501 25255 7590 03/21/2014 CLARIANT CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 4000 MONROE ROAD CHARLOTTE, NC 28205 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 03/21/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BETTINA SIGGELKOW and MARTINA HESS ____________ Appeal 2012-010803 Application 11/149,674 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, CHUNG K. PAK, and KAREN M. HASTINGS, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 3, and 6-13. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A composition comprising A) Solvent Naphtha having a naphthalene content of less than 1% by weight, B) a middle distillate cold flow improver and C) a solubilizing additive selected from the group consisting of aliphatic-C1- to C22- alcohols, alicyclic C1- to C22-alcohols, cycloaliphatic hydrocarbons, monocyclic aromatic hydrocarbons, and mixtures thereof, wherein constituent C) is a monohydric alcohol. Appeal 2012-010803 Application 11/149,674 2 The Examiner relies upon the following references as evidence of obviousness: Tack U.S. 6,554,876 B1 Apr. 29, 2003 Hull U.S. 2003/0154649 A1 Aug. 21, 2003 Exon Mobil Chemical: http://www.exxonmobilechemical.com/Public_Products/Fluids/Aromatic_ HeavyAromatics/Worldwide/FAQs/Aromatics_Aliphatics_FAQ.asp-2002 (Hereby referred to as Tack, Hull and Exxon). Appellants' claimed invention is directed to a composition comprising Solvent Naphtha, a middle distillate cold flow improver, and a monohydric alcohol, e.g., methanol, ethanol, 2-eththexanol, and cyclohexanol. The composition finds utility in improving the cold flow properties of a fuel, such as a middle distillate fuel oil, a biofuel oil, etc. Appealed claims 1, 3, and 6-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tack in view of Hull and Exxon. Appellants do not present separate, substantive arguments for any particular claim on appeal. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants' arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appeal 2012-010803 Application 11/149,674 3 There is no dispute that Tack, like Appellants, discloses a composition for improving the cold flow properties of a fuel, such as a middle distillate fuel and a biofuel, comprising naphtha as a solvent and a middle distillate cold flow improver. Appellants' Principal Brief also does not contest the Examiner's legal conclusion that, based on Hull, it would have been obvious for one of ordinary skill in the art to include at least one of the claimed alcohols as an additive in the Tack composition. Indeed, Tack explicitly discloses that naphtha or alcohols maybe used as the carrier liquid for the composition (col. 13, lines 5-11). Since it is well settled that it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials when each is taught by the prior art to be useful for the same purpose, it would have been obvious for one of ordinary skill in the art to employ a mixture of naphtha and one of the claimed alcohols for the carrier liquid of Tack. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”) The singular argument presented in Appellants' Principal Brief is that Tack does not disclose that the naphtha solvent has a naphthalene content of less than 1% by weight, as presently claimed. Although Appellants acknowledge that Exxon discloses that SOLVESSO, the naphtha solvent of Tack can be obtained in naphthalene-depleted form, i.e., comprising less than 1.0 and 0.1 weight percent, Appellants contend that Exxon does not Appeal 2012-010803 Application 11/149,674 4 teach or suggest that the naphthalene-depleted forms of naphtha "were available at the time of the Tack, et al. invention (prior to March 19, 1998), only that they are available after 2002" (Prin. Br. 11, last para.). Appellants' argument, as explained by the Examiner, lacks legal support. It is by now axiomatic that the test for obviousness is what would have been obvious to one of ordinary skill in the art at the time of filing an application for patent, and not what would have been obvious at the issue date of any patent or disclosure that is cited in a rejection under § 103. In the present case, Appellants have not carried their burden of establishing that one of ordinary skill in the art, at the time of filing the present application, would have found it nonobvious to use a naphtha solvent having a naphthalene content of less than 1% by weight in view of the collective teachings of the applied prior art. Accordingly, the Examiner's legal conclusion of obviousness stands unrebutted. Appellants' Reply Brief contains new arguments that were not made in the Principal Brief regarding the combination of Tack and Hull and certain Specification data. However, arguments not raised in the Principal Brief are considered waived. Optivus Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d 978, 989 (Fed. Cir. 2006); Cross Med. Prods., Inc., v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n. 3 (Fed. Cir. 2005). See also 37 C.F.R. § 41.37(a)(iv). Consequently, we will not entertain the untimely arguments submitted in the Reply Brief. As a final point, we note Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results in the Principal Brief. Appeal 2012-010803 Application 11/149,674 5 In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner 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(a)(1)(iv). AFFIRMED cam