Ex Parte Wells et al

Patent Trial and Appeal Board

Aug 22, 2017

13552702 (P.T.A.B. Aug. 22, 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.
13/552,702 07/19/2012 Paul P. Wells 2011EM207-US2 7129
7590
ExxonMobil Research & Engineering Company
P.O. Box 900
1545 Route 22 East
Annandale, NJ 08801-0900
EXAMINER
HINES, LATOSHAD
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
ipg @ exxonmobil .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL P. WELLS, KRYSTAL B. WRIGLEY,
DENNIS H. HOSKIN, and ROGER G. GAUGHAN
Appeal 2017-002247
Application 13/552,702
Technology Center 1700
Before JEFFREY B. ROBERTSON, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002247
Application 13/552,702
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3—17, and 19—24.2 (App. Br. 6.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The Specification states that the invention relates to aviation gas
turbine fuels with improved low temperature operability characteristics.
(Spec. ]f2.) In particular, the Specification describes that adding a “relatively
small amount” of biodiesel, such as a lower alkyl ester of a fatty acid of
natural origin having from 8 to 24 carbon atoms, “can facilitate a lowering in
the temperature at which crystals can appear in the fuel.” (Spec. H 13—14.)
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A petroleum-based aviation gas turbine fuel comprising a
blend of a hydrocarbon base petroleum fuel component and
from 10 to 1000 ppm, v/v of the total fuel, of a lower alkyl
ester of a fatty acid of natural origin having from 8 to 24 carbon
atoms, such that the blend exhibits a Cloud Point (ASTM D
2500) at least 3°C lower than that of the petroleum fuel
component without the alkyl ester and a Freeze Point (ASTM
D5972) within 1°C of a Freeze Point of the petroleum fuel
component without the alkyl ester.
(App. Br. Claims Appendix 15.)
1 According to the Appellants, the Real Party in Interest is ExxonMobil
Research and Engineering Company. (Appeal Brief filed May 24, 2016,
hereinafter “App. Br.,” 3.)
2 Claims 2 and 18 have been canceled. (See App. Br. Claims Appendix 15-
lb.)
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Application 13/552,702
THE REJECTIONS
The Examiner rejected claims 1, 3—17, and 19—24 under 35 U.S.C.
§ 103(a) (pre-AlA) as follows:
I. Claims 1, 3—15 and 19—21 as obvious over Krupa;3’4
II. Claims 22—24 as obvious over Krupa; and
III. Claims 16 and 17 as obvious over Krupa in view of
ExxonMobil.5
(Examiner’s Answer mailed September 26, 2016, hereinafter “Ans.” 2—7.)
ISSUE
Regarding claim 1, the Examiner found that Krupa discloses a fuel oil
composition that is a synergistic blend of petroleum based fuels with
renewable fuels in order to enhance the cold temperature operability
properties of the fuel. (Ans. 3 citing Krupa 118.) The Examiner found that
Krupa discloses middle distillate fuels for aviation including those
designated by such terms as JP-4, JP-5, JP-7, JP-8, Jet A, and Jet A-l. (Ans.
3 citing Krupa 140.) The Examiner found that Krupa discloses that the
renewable fuels can be lower alkyl esters, typically methyl esters of CIO to
C24 fatty acids obtained from natural (vegetable or animal) sources. (Ans. 3
3 U.S. Patent Application Publication No. 2008/0163542 A1 to Krupa et al.
published July 10, 2008.
4 Although the Examiner’s Answer lists claims 1—15 and 19—21 in the
statement of rejection (Ans. 3), as noted above, claim 2 has been canceled.
Accordingly, we view the listing of claim 2 in the statement of rejection to
be harmless error.
5 ExxonMobil Aviation, “World Jet Fuel Specifications with Avgas
Supplement,” 2005.
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Application 13/552,702
citing Krupa ^H|44—46.) The Examiner found that Krupa discloses that the
fuel can contain up to 20% by volume of the finished fuel blend of the
claimed fatty acid alkyl ester, which encompasses the claimed range of fatty
acid alkyl esters. (Ans. 3 citing Krupa 152.) As a result, the Examiner
concluded that a prima facie case of obviousness exists. (Ans. 3, citing In re
Wertheim, 541 F.2d 257 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed.
Cir. 1990.)) The Examiner stated further that because Krupa discloses the
same esters included in the same fuels, the range of differences between the
cloud point and freezing point must encompass or at least overlap the
claimed range. (Ans. 4.)
Appellants contend that the rejections do not identify a reference
disclosing the combination recited in the claims having the Cloud Point and
Freeze Point properties recited therein. (App. Br. 7.) Appellants argue that
Krupa’s disclosure is broad, and as such, gives rise to a genus-species
situation requiring further analysis than what was presented in the rejection.
(App. Br. 7—9, 13.) Appellants contend further that the actual concentration
range of lower alkyl ester of a fatty acid disclosed in Krupa does not overlap
with the ranges of alkyl ester of a fatty acid recited in the claims. (App. Br.
9—10.) Appellants argue that the blends described in Krupa do not provide a
reliable improvement in cold temperature properties. (App. Br. 11.)
Appellants contend that the fuel blend recited in the claims provides
unexpected results with respect to the lowered Cloud Point while
maintaining a substantially similar Freezing Point compared to petroleum
fuel component without alkyl ester, where Krupa is silent as to Cloud Point.
(App. Br. 11-13.)
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Application 13/552,702
Accordingly, the dispositive issue on appeal is:
Have Appellants shown that the Examiner reversibly erred in
concluding that the blend of hydrocarbon base petroleum fuel and lower
alkyl ester of a fatty acid of natural origin having the Cloud Point and Freeze
Point properties recited in the claims would have been obvious in view of
the evidence of record?
PRINCIPLES OF LAW
With respect to ranges, our reviewing court has stated:
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.
E.g., In re Woodruff 919 F.2d at 1578, 16 USPQ2d at 1936-37
(concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1—5%” carbon
monoxide) abutted the claimed range (“more than 5% to about
25%” carbon monoxide)); In re Malagari, 499 F.2d at 1303, 182
USPQ at 553 (concluding that a claimed invention was rendered
prima facie obvious by a prior art reference whose disclosed
range (0.020-0.035% carbon) overlapped the claimed range
(0.030-0.070% carbon)); see also In re Geisler, 116 F.3d at
1469, 43 USPQ2d at 1365 (acknowledging that a claimed
invention was rendered prima facie obvious by a prior art
reference whose disclosed range (50-100 Angstroms) overlapped
the claimed range (100—600 Angstroms)). We have also held that
a prima facie case of obviousness exists when the claimed range
and the prior art range do not overlap but are close enough such
that one skilled in the art would have expected them to have the
same properties. Titanium Metals Corp. v. Banner, 778 F.2d
775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (concluding that a
claim directed to an alloy containing “0.8% nickel, 0.3%
molybdenum, up to 0.1% maximum iron, balance titanium”
would have been prima facie obvious in view of a reference
disclosing alloys containing 0.75% nickel, 0.25% molybdenum,
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Application 13/552,702
balance titanium and 0.94% nickel, 0.31% molybdenum, balance
titanium).
In re Peterson, 315 F.3d 1325, 1330 (Fed Cir. 2003).
“In general, an applicant may overcome a prima facie case of
obviousness by establishing ‘that the [claimed] range is critical, generally
by showing that the claimed range achieves unexpected results relative to
the prior art range.’” Peterson, 315 F.3d at 1330 (quoting In re Geisler,
116 F.3d 1465, 1469—70). The showing must be commensurate in scope
with the claimed range or, in other words, an applicant must show that the
unexpected result occurs throughout the entire claimed range. Id.', see also
In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Harris needed to show
results covering the scope of the claimed range”). The showing must also
present enough data points within the prior art range, but outside the claimed
range, to establish that the unexpected property does not occur outside the
claimed range. In re Hill, 284 F.2d 955, 958—59 (CCPA 1960).
DISCUSSION
Claims 1, 3—15, and 19—24 as obvious over Krupa
Appellants do not present separate arguments with respect to the
claims. Accordingly, we confine our discussion to appealed claim 1, which
contains claim limitations representative of the arguments made by
Appellants pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
Initially, we do not subscribe to Appellants’ view that the Examiner’s
analysis of Krupa was deficient given the breadth of the disclosure therein.
As found by the Examiner, Krupa specifically identifies middle distillates
including Jet A, Jet A-l, JP-5, and JP-8, which are the same fuels identified
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Application 13/552,702
in the Specification. (Ans. 3; Krupa 140, Spec. 118.) In addition, Krupa
discloses renewable fuels that are the same esters of long chain fatty acids
derived from vegetable oils or animal fats as disclosed in the Specification.
(Ans. 3; Krupa H40-46, Spec. H20-24.) Thus, we agree with the Examiner
that Krupa discloses a blend of hydrocarbon base petroleum fuel component
and a lower alkyl ester of a fatty acid of natural origin as recited in claim 1.
We are also not persuaded by Appellants’ argument that Krupa does
not disclose or suggest amounts as low as the amounts of ester recited in
claim 1. Appellants point to paragraph 53 of Krupa in support of their
argument that Krupa discloses a lower limit of biodiesel at 0.5% by volume,
which is greater than recited in the claims by 50 fold. (App. Br. 9, 13; Reply
Brief filed November 28, 2016, 4.6) However, contrary to Appellants’
arguments, Krupa does not disclose 0.5% by volume as a lower limit, rather
Krupa makes clear that the invention applies to “very low renewable fuel
concentrations” and provides amounts of “7.5, 5, 3, 2, 1, and 0.5% by
volume of the finished fuel blend” only as examples of such concentrations.
(Krupa 153.) Indeed, as the Examiner points out, in claim 16, Krupa
discloses that the amount of renewable fuel is between about 0.1% to about
99.9% by volume of the fuel blend. (Ans. 8.) Therefore, Krupa explicitly
discloses amounts lower than 0.5% by volume, which is consistent with the
Examiner’s position that the “up to 20% by volume of the finished fuel
6 To the extent the Reply Brief contains new arguments (see Reply Brief 46),
such arguments have not been considered as Appellants have not made a
sufficient showing of good cause as to why such arguments were not raised
in the Appeal Brief. 37 C.F.R. § 41.41(b)(2).
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Application 13/552,702
blend” disclosure in Krupa encompasses and/or overlaps the ranges recited
in claim 1. (Id.)
Regarding the cloud point and freezing point requirements in claim 1,
we agree with the Examiner, that because the blends disclosed in Krupa in
the amounts recited in the claim would have been obvious, the cloud point
and freezing point requirements would be met. In this regard, “[t]he fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be a basis for
patentability when the difference would otherwise have been obvious.” Ex
parte Obiaya, 227 USPQ 58, 60 (BPA1 1985).
Here, Krupa discloses that the invention described therein is based on
an unexpected synergy between petroleum fuels and renewable fuels
(biodiesel) that enhances the cold flow properties of the petroleum fuel
blends, where cold flow properties include Cloud Point. (Krupa H 17, 26.)
Krupa discloses that the results obtained therein “were a great surprise as the
commonly held belief in the petroleum industry is tat [sic, that] renewable
fuelers [sic] will have a great detrimental effect on cold temperature
operability characteristics of petroleum fuels.” (Krupa 1 84.) Thus, while
the results in Krupa are based on measurements of the Cold Filter Plugging
Point (CFPP), Krupa provides the recognition that petroleum fuels may be
blended with renewable fuels in order to improve cold temperature
properties, where such cold temperature properties include Cloud Point.
(Krupa, 11 8, 26, 79-84.)
Moreover, Krupa discloses “[i]t is evident that by a proper choice of
the type and volume % of a renewable fuel, a fuel blend can be produced
with enhanced Cold Temperature Operability characteristics.” (Krupa 184.)
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As a result, we are also not persuaded by Appellants’ argument that the
results in Krupa are unreliable. (App. Br. 11—12.) Rather, Krupa clearly
discloses that volume percentage of the renewable fuel is a variable that
affects the Cold Temperature Operability characteristics of the blend, which
further supports the Examiner’s conclusion of obviousness.
Unexpected Results
Appellants contend that the Specification provides for unexpected
results in the form of lowering the Cloud Point without significant change in
other cold temperature properties such as Freezing Point at low amounts of
ester in the fuel blend. We are not persuaded by this argument.
In particular, although the Specification provides examples where
ester was present in concentrations of 0, 50, 100, 250, and 400 ppm of a
kerojet fuel blend and exhibited a lower Cloud Point than the fuel without
the ester, and where Freezing Point and CFPP are not significantly affected,
the Specification does not provide any results of concentrations of ester at
the upper end of the ranges recited in the claims.7 (Spec. Tflf 34-43, Tables
1—3); Peterson, 315 F.3d at 1330. In addition, the Specification does not
provide any examples of fuel blends having amounts of ester exceeding the
limits in the claims. Hill, 284 F.2d at 958—59. Further, although Appellants
emphasize a non-linear improvement in Cloud Point (App. Br. 12—13) as a
basis for unexpected results, Appellants do not direct our attention to any
7 In one example, the added amount of ester does not appear to have the
claimed effect on the cloud point. (Spec. ]fl3, Table 2, 10.)
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persuasive evidence of record to support the position that one of ordinary
skill in the art would have considered such a relationship to be unexpected.8
Given the teachings of Krupa discussed above with respect to the
effect of renewable fuels added to petroleum fuels on cold temperature
properties, Appellants’ arguments regarding unexpected results are not
supported by sufficient evidence to support.
We have considered Appellants’ remaining arguments, but find them
to be without merit.
As a result, we affirm the Examiner’s decision to reject claims 1, 3—
15, and 21—24.
Claims 16 and 17
Appellants do not separately argue the rejection of dependent claims
16 and 17 as obvious over Krupa and ExxonMobil. (See App. Br. 14.)
Accordingly, we affirm the Examiner’s rejection of claims 16 and 17 for the
same reasons as discussed above.
CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in concluding that the blend of hydrocarbon base petroleum fuel and
lower alkyl ester of a fatty acid of natural origin having the Cloud Point and
8 We observe that Krupa provides examples demonstrating a non-linear
relationship in the change in CFPP in the addition of renewable fuel to
petroleum fuels. (Spec. 80—82, Table 2, e.g., Diesel 2-BIO 001, Diesel 3-
BIO 001.)
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Freeze Point properties recited in the claims would have been obvious in
view of the evidence of record.
ORDER
We affirm the Examiner’s decision rejecting claims 1, 3—17, and 19—
24 under 35 U.S.C. § 103(a).
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
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