Ex Parte Yang et al

Patent Trial and Appeal Board

Jun 20, 2016

12793463 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121793,463 06/03/2010 Jianzhong Yang
87884 7590 06/22/2016
Mossman, Kumar and Tyler, PC
P.O. Box 421239
Houston, TX 77242
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.
IND4-45511-USCP 6742
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
docket@mktlaw.us.com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANZHONG YANG, MICHAEL J. ZETLMEISL and
PAUL J. BIGGERSTAFF
Appeal2014-006508
Application 12/793,463
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134( a) of a final decision of the Primary Examiner to reject claims 1--4, 6-
8, 10-17, and 19-222. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants state that the real party in interest is "BAKER HUGHES
INCORPORATED" (Appeal Brief filed November 19, 2013, hereinafter
"Appeal Br.," 3).
2 Appeal Br. 6; Final Office Action entered May 24, 2013 (hereinafter "Final
Act.") 1.
Appeal2014-006508
Application 12/793,463
BACKGROl.J1'-JD
The subject matter on appeal relates to "additives for middle
distillate fuels, such as diesel[,]" and "methods for improving the cetane
number of middle distillate fuels using chemical additives" (Specification,
hereinafter "Spec.," i-f 2). Claim 1, the representative independent claim on
appeal, is reproduced from page 21 of the Appeal Brief (Claims Appendix,
hereinafter "Claims App."), with key limitations indicated in italicized text,
as follows:
1. A method for improving the cetane number of a middle
distillate fuel comprising adding to the distillate fuel an
effective amount of an additive composition for improving the
cetane number of the middle distillate fuel, the additive
composition comprising:
a polymer selected from the group consisting of
homopolymers and copolymers of olefins, and mixtures thereof,
where the polymer has a weight average molecular weight
rangingfrom about 200,000 to about 5,000,000;
a free radical initiator component selected from the group
consisting of an alkyl nitrate, a peroxide, and combinations
thereof; and
an alcohol,
thereby synergistically improving the cetane number where the
cetane number of the middle distillate fuel is the same as or
greater than the cetane number achieved when in the additive
composition the free radical initiator component is present at
the same total additive dosage level for both the polymer and
the free radical initiator component and no polymer is present.
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1-3, 6, 7, 10-13, 15-17, and 19-22 as being unpatentable
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Application 12/793,463
TT ' ' ... /"I • ro, ll'.TT ' .... ,. 1. • • ro-.---, ... T ' ... over ttan et al. ~neremaner ··ttan--r m view or bscne, Jr. et al.
(hereinafter "Esche")4 (Examiner's Answer entered March 13,
2013, hereinafter "Ans.," 2-5; Final Act. 3-7); and
II. Claims 4, 8, and 14 as being unpatentable over Hart in view of
Esche and Poirier5 (Ans. 5-6; Final Act. 7-8).
DISCUSSION
Referring to independent claims 1, 7, 10, 15 and 20 collectively, the
Appellants argue the claims subject to Rejection I together (Appeal Br. 6-
18). Therefore, consistent with 37 C.F.R. § 41.37 (c)(l)(iv), we confine our
discussion of Rejection I to representative claim 1 and, by rule, our decision
on the appeal for claim 1 controls our decision for claims 2, 3, 7, 10-13, 15-
17, and 19-22. With respect to Rejection II, the Appellants argue claims 4,
8, and 14 together under a separate heading but rely on the same arguments
offered in support of Rejection I (id. at 18-20). Therefore, our decision on
the rejection of claim 1 also controls our decision as to the rejection of
claims 4, 8, and 14.
With respect to representative claim 1, the Examiner found that Hart
discloses "a composition to stabilize hydrocarbon fuel over a range of
alcohol and water concentrations[,]" wherein "[t]he compositions include a
minor amount of combustion aid as a cetane improver and a minor amount
of a solvent as an alcohol" (Final Act. 3). The Examiner also found that
Hart teaches that the cetane improver may be an alkyl nitrate (id.). The
3 US 2004/0093789 Al, published May 20, 2004.
4 US 6, 107 ,258, issued August 22, 2000.
5 US 5,482,518, issued January 9, 1996.
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Application 12/793,463
Examiner further determined that Hart does not describe "a polymer
selected from the group consisting of homopolymers and copolymers of
olefins .... ha[ ving] a weight average molecular weight ranging from about
200,000 to about 5,000,000" as recited in claim 16 (id. at 3--4). To resolve
this difference, the Examiner relied on Esche, which was found to teach
"novel multi-functional fuel additives that are olefin polymer or copolymer
and are derived from polymerizable C2 to C23 olefins" (id. at 4). The
Examiner found that Esche' s olefin polymers or copolymers may be
"ethylene-propylene or higher alpha-olefin copolymers [that] have a number
average molecular weight between 700 to 500,000" (id.). The Examiner
explained that it would have been obvious to one of ordinary skill to modify
the fuel composition of Hart by adding Esche's multi-functional fuel
additive because the "multi-functional fuel additive provides dispersancy
properties as well as viscosity index improver credit, improved fuel
economy and low temperature viscometric properties" (id.). With regard to
the molecular weight of the (co )polymers recited in claim 1, the Examiner
stated that it would have been obvious to one of ordinary skill in the art "to
use a molecular weight of about 200,000 to about 500,000 since it has been
held that wherein general conditions are known, workable ranges involve
only routine experimentation. In re Aller, 220 F .2d 454, 456, 105 USPQ
233, 235 (CCPA 1955)" (id.).
6 In the Final Action, the Examiner stated: "where the polymer has a weight
average molecular weight ranging from about 300,000 to about 5,000,000"
(Final Act. 4 ). The claim actually recites "a weight average molecular
weight ranging from about 200,000 to about 5,000,000" (Appeal Br., Claims
App., claim 1 ).
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Application 12/793,463
The Appellants contend that: (1) "it is not obvious to combine the
reference teachings to give the claimed invention" (Appeal Br. 6); (2) the
"claims require synergistic improvement in cetane number" (id. at 9); (3)
"synergistic results rebut a prima facie showing of obviousness" (id. at 13);
(4) the "supposed 'inherency' is not applicable" (id. at 14); (5) there is "no
evidence to support the combination of homopolymer or copolymer of
olefins with a free radical initiator would result in unexpected results" (id. at
16); (6) "claim 6 is additionally patentable because the references do not
render it obvious and it recites reduced NOx [nitrous oxide] emissions" (id.
at 17); and (7) the "rejection of dependent claims 4, 8 and 14 also are
rebutted by unexpected or synergistic results" (id. at 18).
The Appellants' arguments, considered in light of the relied-upon
evidence, fail to identify any reversible error in the Examiner's rejection. In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We address each of the issues raised by the Appellants below.
I. Whether the Examiner Articulated a Sufficient Reason to Combine the
References in the Manner Claimed
The Appellants contend that Esche teaches functionalized olefin
copolymer additives as "multi-functional fuel and lubricant additives"
providing "dispersancy properties[,]" "improved viscosity index[,]"
"improved fuel economy[,]" and "improved low temperature viscometric
properties"-not "improved cetane number" (Appeal Br. 7). The Appellants
argue that Esche "only discloses conventional cetane improvers" and that
"[ o ]lefin polymers and copolymers are not disclosed or suggested to be
cetane improvers by any references" (id. at 8). The Appellants also argue
that one of ordinary skill in the art would not have been motivated to
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Application 12/793,463
"improve the cetane number of the [Hart's] method" by using "the polymers
of [Esche] because the ... polymers were not taught or suggested to improve
the cetane number" (id.).
We disagree. Consistent with the Examiner's findings (Final Act. 4),
Hart describes a fuel composition comprising a hydrocarbon fuel, a minor
amount of C1-C3 alcohol, a minor portion of water, a minor portion of a
stabilizer, and optionally a combustion aid, such as a cetane improver, and a
minor amount of a solvent such as a water solubilizing higher (C4-16) alcohol
(Hart, i-f 48). According to Hart, "[k ]nown cetane improvers include alkyl
nitrates, such as 2-ethylhexylnitrate (2EHN), and organic peroxides" (i-f 6).
As reflected in the Appellants' own citation to Esche (Appeal Br. 7-8)
(citing Esche, col. 12, 11. 60-65), it is well-known in the art to incorporate
cetane improvers as additives into fuel compositions comprising
"functionalized olefin copolymer products" (Esche, col. 12, 11. 47---65).
Thus, the Appellants are correct that Esche' s reason for including the
functionalized olefin copolymer additives-i.e., to "provide[] dispersancy
properties as well as viscosity index improver credit, improved fuel
economy and low temperature viscometric properties" (col. 1, 11. 5-8}-is
not the same reason as that of the Appellants-i.e., to improve cetane
number. But the Examiner's articulated motivation or reason to combine the
prior art references need not be the same as that of the Appellants (i.e.,
improving the cetane number of a middle distillate fuel composition). KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed."). See also In re Kemps, 97 F.3d 1427,
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1430 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 692-693 (Fed. Cir. 1990)
(en bane).
When Esche' s functionalized copolymer additive is added to Hart's
composition for the advantages disclosed in Esche, any additional advantage
in terms of cetane improvement would naturally flow from following the
suggestion in the prior art references. In re Wiseman, 596 F.2d 1019, 1023
(CCP A 1979) (rejecting the notion that "a structure suggested by the prior
art, and, hence, potentially in the possession of the public, is patentable ...
because it also possesses an [i]nherent, but hitherto unknown, function [i.e.,
characteristic] which they [patentees] claim to have discovered."). See also
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (holding that the
recognition of a result flowing naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious).
For these reasons, we hold that the Examiner articulated a sufficient
reason with some rational underpinning to support a conclusion that a person
having ordinary skill in the art would have combined Esche with Hart to
arrive at a composition encompassed by claim 1.
II. Whether the Appellants' Proffered Evidence Establishes an
Unexpected Synergistic Improvement in Cetane Number Sutficient to
Rebut the Examiner's Prima Facie Showing o(Obviousness
The Appellants argue that the "present claims consistently require a
synergistic improvement in the cetane number as defined by the claims and
the specification and as shown and supported by the experimental
Examples" (Appeal Br. 9-13) (relying on Spec. i-fi-f 14, 15, 19, 25-27 and
Tables I-VI). The Appellants contend that "the fact that a synergistic
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improvement of cetane number resulted and was discovered overcomes the
supposed prima facie case of obviousness" and that "[ u ]nexpected
synergistic results are indicative of nonobviousness, Ex parte The Nutra-
Sweet Co., 19 U.S.P.Q.2d 1586 (B.P.A.I. 1991)" (Appeal Br. 13).
The Examiner found that "unexpected results have not been proven as
the results that [the Appellants are] relying on do not show what is being
claimed as unexpected and synergistic results" (Ans. 8) (emphasis added).
Specifically, the Examiner pointed out that "Table 1 shows a very marginal
improvement [over a control composition (Example 2) containing only 1000
ppm of 2-EHN (or 2EHN as described in Hart) as a cetane improver] in
Examples 3-5 with the difference in cetane number being 0.2 for [E]xample
3 and 0.1 for [E]xamples 4 and 5" (id.). In addition, the Examiner found that
"the examples only show a synergist with a 2,000,000 mw PIB
[polyisobutylene] homopolymer and do not show results across the entire
range of a polymer with a molecular weight ranging from about 200,000 to
about 5,000,000" and, therefore, the showing is not commensurate in scope
with the claims (id. at 8-9).
It is well-settled that "before secondary considerations can carry the
day" in an obviousness context, the applicants must establish a nexus
between the evidence and the merits of the invention. In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011). The difference in results between the claimed
invention and the closest prior art must be shown to have been unexpected
from the perspective of a person of ordinary skill in the art. In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005) ("The 32--43% increase in stress-
rupture life ... does not represent a 'difference in kind' that is required to
show unexpected results.") (quoting In re Huang, 100 F.3d 135, 139 (Fed.
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Cir. 1996)). In addition, "[e]vidence of secondary considerations must be
reasonably commensurate with the scope of the claims." Kao at 1068.
Applying these principles, we determine that the Appellants have
failed to show a nexus between the merits of the claimed invention and the
evidence of secondary considerations. In other words, the Appellants have
failed to show that the alleged novel feature of the claim, i.e. the synergistic
improvement of the cetane number in a middle distillate fuel including an
additive comprising both an olefin polymer or olefin copolymer and a free
radical initiator, provides any significant improvement or unexpected results
over the cetane number realized in a middle distillate fuel comprising an
additive made of a free radical initiator, i.e. an alkyl nitrate, only.
Examples 3-5 (Spec. 9, Table I), each with an additive composition
comprising a synergist (a 2,000,000 Mw polyisobutylene homopolymer) and
2-EHN, have a cetane number of 48.4, 48.3 and 48.3, respectively. Each of
these cetane numbers is slightly greater than the cetane number of 48.2
observed for Example 2, which describes an additive composition
comprising 2-EHN only. These differences in results have not been shown
to have been considered to be unexpected by one of ordinary skill in the art.
The other examples are similarly insufficient. In particular, Example
10 (Spec. 9, Table II) provides an additive composition including a synergist
in the form of 600 ppm of a 2,000,000 molecular weight (hereinafter "Mw")
polyisobutylene homopolymer and 400 ppm of 2-EHN resulted in a cetane
number of 50.4, whereas Example 7 that comprises 1000 ppm of2-EHN has
a cetane number of 49.6 (Spec. 9, Table II). Again, the small improvement
has not been shown to be the kind of difference that would have been
considered unexpected by one of ordinary skill in the art. Additionally, in
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Application 12/793,463
comparing Example 14 to Example 12, we see that the two additive
compositions have the same cetane number despite the fact that the Example
12 additive composition is made up of only 2-EHN whereas the additive
composition of Example 14 is a combination of a synergist (a 2,000,000 Mw
polyisobutylene homopolymer) and 2-EHN. Therefore, there is no
unexpected synergistic improvement that are shown between Examples 12
and 14.
With regard to Example 22, it is difficult to compare Example 22 with
Examples 20 and 21 because Example 22 does not comprise a solvent while
both Example 20 and Example 21 include a solvent. Although an increase
in cetane number is seen in Example 22 when compared to Example 21, one
of ordinary skill would not be able to determine if the cetane number
improvement is attributed to the inclusion of an additive comprising both 2-
EHN and the synergist (a 2,000,000 mw polyisobutylene homopolymer) or
if the cetane number of the fuel of Example 20 or 21 was negatively affected
by the inclusion of the solvent (Spec. 11, Table V}-a difference that is not
reflected in claim 1. In re Dunn, 349 F.2d 433, 439 (CCPA 1965).
Lastly, we agree with the Examiner that the experimental data offered
are not commensurate in scope with claim 1. The examples provided in the
Specification are limited to compositions that contain a 2,000,000 Mw
polyisobutylene as the synergist polymer, while claim 1 reads on any olefin
homopolymer or copolymer of olefins having a broad molecular weight
range of about 200,000 to about 5,000,000 and mixtures thereof. The
Appellants have failed to show that other types of homopolymers or
copolymers of olefins, or mixtures thereof, would provide similar results.
Kao at 1068.
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For these reasons, the Appellants' arguments are unpersuasive to
identify a reversible error in the Examiner's determination that the offered
secondary considerations evidence is insufficient to overcome the prima
facie case of obviousness.
III. Whether the Examiner's Supposed "Inherency" Position Regarding
the Offered Unexpected Results Evidence Constitutes Reversible
Error (The Appellants' Fourth and Fifth Arguments)
In the final rejection, the Examiner found that the "synergistic
improvement of the cetane number would be inherent [in] the combination"
of Hart and Esche (Final Act. 8). The Appellants contend that "[ s ]uch
synergy could not be inherent because the claimed composition did not exist
until the Appellants made it" and that inherency cannot be established by
mere probabilities or possibilities (Appeal Br. 14). According to the
Appellants, inherency is an issue only in the context of anticipation, not
obviousness (id. at 15).
As we discussed above, the mere fact that the prior art references did
not appreciate an undisclosed characteristic or function does not necessarily
render a composition suggested by the prior art patentable. Wiseman, 596
F.2d at 1023; Kao, 639 F.3d at 1070 ("Maloney's express teachings render
the claimed controlled release oxymorphone formulation obvious, and the
claimed 'food effect' adds nothing of patentable consequence.").
That characteristic or function must be shown to have been
unexpected by one of ordinary skill in the art. For the reasons discussed
above, the Appellants failed to demonstrate that the novel feature of claim 1
gives rise to any unexpected result over the closest prior art, i.e., Hart.
Moreover, the Appellants failed to establish that the slight improvement in
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terms of cetane number outweighs the obviousness of adding Esche' s
functionalized olefin copolymer for its disclosed beneficial effects. Kao,
639 F .3d at 1072 ("[E]vidence of secondary considerations was insufficient
to overcome [a] strong showing of primary considerations that rendered the
claims at issue invalid.").
For these reasons, the Appellants' fourth and fifth arguments do not
identify a reversible error.
IV. Whether Claim 6 is "Additionally Patentable Because the References
Do Not Render it Obvious, and it Recites Reduced NOx Emissions"
(The Appellants' Sixth Argument) (Appeal Br. 17-18)
The Examiner determined that the "Appellant[s] [have] not
established that reduced NOx emissions would be unexpected and a result
from the synergistic combination of PIB homopolymer and the EHN (alkyl
nitrate)" (Ans. 9). This determination was based upon an analysis of the
examples given in Table VII (Spec. 12) where there is no example provided
with a "combination of PIB homopolymer" and "[2-] EHN (alkyl nitrate) at
the same dosage compared to the same dosage of either the PIB
homopolymer or the [2-] EHN separately" (Ans. 9).
The Appellants, referring to Table VII, argue that the "6.2%
reduction" ofNOx reduction in Example 29 "is almost twice the expected
additive reduction of 3.3%" (0.1 % NOx reduction for Example 27 + 3.2%
NOx reduction for Example 28 = 3.3% NOx reduction) (Reply Br. 9). The
Applicants contend that
less of the PIB and less of the 2-EHN was used in Example 29
as compared with Examples 27 and 28, respectively. Thus, the
Appellants respectfully submit that a synergistic NOx reduction
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was indeed demonstrated by the Table VII results (Reply Br. 9;
Spec., Table VII, p. 12).
We have fully considered the Appellants' arguments; however, we
find that the arguments do not reveal a reversible error in the Examiner's
determination that the Appellants have not established that reduced NOx
emissions would be unexpected and result from the synergistic combination
of a PIB homopolymer and 2-EHN, alkyl nitrate. We note that in Examples
27-29, different treat rates were used, i.e. 2000 ppm for Example 27, 500
ppm for Example 28, and 2000 ppm for Example 29 (Spec. 12, Table VII).
Additionally, the total concentration of the additive, 2-EHN, in Example 28
is greater than the total concentration of the additive, the combination of the
polymer and the 2-EHN, in Example 29 (Spec., p. 12, Table VII). Although
the Appellants' arguments presume that total amount of additives is directly
proportional to %NOx reduction, that presumption is not supported by
factual evidence. As a result of the unfixed variables (treat rate and the total
concentration of the additive composition), one of ordinary skill in the art at
the time of the invention would not have been able to determine the cause of
the observed benefit-the alleged percent reduction in NOx in the additive
composition. Dunn, 349 F.2d at 439 ("While we do not intend to slight the
alleged improvements, we do not feel it an unreasonable burden on
appellants to require comparative examples relied on for non-obviousness to
be truly comparative. The cause and effect sought to be proven is lost here
in the welter of unfixed variables.").
We also find that the Appellants have not shown that they would
receive an improvement in NOx reduction using a polymer other than a
2,000,000 molecular weight polyisobutylene PIB (Spec. i-f 28; Spec., p. 12,
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Table VII). Therefore, consistent with the Examiner's position, the offered
showing is not commensurate in scope with the claim.
For these reasons, we hold that claim 6 is not patentable. We further
hold that it has not been clearly shown that NOx emissions are reduced as a
result of the claimed additive composition. The rejection of claim 6 is
affirmed.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, the
Examiner's final decision to reject claims 1--4, 6-8, 10-17, and 19-22 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)(l ).
AFFIRMED
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