Innospec LimitedDownload PDFPatent Trials and Appeals BoardJun 25, 20212020003296 (P.T.A.B. Jun. 25, 2021) 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. 15/980,151 05/15/2018 Andrea Sneddon 27073-45CON 4485 26486 7590 06/25/2021 BURNS & LEVINSON, LLP 125 HIGH STREET BOSTON, MA 02110 EXAMINER HINES, LATOSHA D ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 06/25/2021 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): docketing@burnslev.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREA SNEDDON Appeal 2020-003296 Application 15/980,151 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s February 7, 2019 decision to finally reject claims 17–33 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). As noted by Appellant (Appeal Br. 3), we issued a decision on March 15, 2018 in connection with the parent of the application presently on Appeal (“Prior Decision”). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Innospec Limited (Appeal Br. 3). Appeal 2020-003296 Application 15/980,151 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to an additive for bio-fuels, which are derived in whole or in part from animal or vegetable oil (“Bx fuels”) (Spec. 1:3–7). At temperatures above the cloud point (“CP”) of Bx fuels, precipitates are said to form, thereby blocking filters in distribution systems and vehicles (id. at 1:13–15). The appealed claims are directed to a method of improving the filterability of Bx fuels comprising the addition of an additive to such fuels. Claim 1, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 17. A method of improving the filterability of a Bx fuel above the cloud point of the Bx fuel, the method comprising adding to the fuel an additive which is the reaction product of (i) a compound containing the segment –NR1R2 where R1 represents a group containing from 4 to 44 carbon atoms and R2 represents a hydrogen atom or a group R1, and (ii) a carboxylic acid having from 1 to 4 carboxylic acid groups or an acid anhydride or acid halide thereof; wherein the group R1 is a predominantly straight chain, substantially saturated hydrocarbyl group comprising from 10 to 24 carbon atoms; and the carboxylic acid is an optionally substituted benzene dicarboxylic acid thereby forming a composition; wherein upon passing the composition through a filter at a temperature above the cloud point of the Bx fuel, the composition has a reduced filter blocking tendency as compared to the Bx fuel alone. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Davies et al. US 5,743,923 April 28, 1998 Dillworth et al. US 5,958,089 September 28, 1999 Eisenbeis et al. US 2009/0188159 A1 July 30, 2009 Appeal 2020-003296 Application 15/980,151 3 REJECTION Claims 17–33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Eisenbeis, Davies, and Dillworth. DISCUSSION The dispositive issue for this appeal is whether, based on the cited art, it would have been obvious to seek to improve the filterability of a Bx fuel above the cloud point of the Bx fuel using the claimed additive. In particular, the Examiner finds that Eisenbeis discloses a Bx fuel which includes the claimed additive (Final Act. 3–4). The Examiner further finds that Eisenbeis does not disclose storing the Bx fuel at a temperature above the fuel’s CP temperature (Final Act. 4).2 However the Examiner further finds that Davies discloses storing Bx fuels at temperatures below their CFPP (cold filter plugging point) temperatures, which is necessarily also below their CP temperatures (Final Act. 4–5). According to the Examiner: It would have been obvious to one of ordinary skill in the art at the time of the invention to store the Bx fuel above the cloud point temperature as taught by Davies in the cold filtering method of Eisenbeis in order to increase the flow ability of fuels at low temperatures during cold filtering of fuels (see column I lines 50-60 of Eisenbeis), and to reduce the haziness and precipitation from the composition. (Final Act. 5). The Examiner further finds that Dillworth discloses a fuel additive composition comprising a nitrogen compound and a carboxylic acid and teaches that it can be used above a fuel’s CP temperature (Final Act. 5). The Examiner determines that it would have been obvious “to test the 2 We note that claim 17 does not recite storing the Bx fuel at any specific temperature. Appeal 2020-003296 Application 15/980,151 4 composition of Eisenbeis and Davies, through the filtering method of Dillworth [i.e. above the CP temperature], in order to measure the filterability of the composition at temperatures above their cloud point” (Final Act. 6). Appellant argues that Eisenbeis and Davies are directed to improving the flowability of diesel fuels below their CP temperatures, and provide no guidance or suggestion to act at temperatures above the CP temperatures (Appeal Br. 5–6). Appellant further argues that Dillworth does not relate to Bx fuels, is instead directed to petroleum based fuels, in particular to problems caused by additives in petroleum-based fuels resulting in precipitates at low temperatures, and that “none of Eisenbeis, Davies or Dillworth, either separately or in combination, teach or suggest treating Bx fuel above the CP temperature to improve filterability” (Appeal Br. 7–8). In response, the Examiner finds that Eisenbeis teaches that the treated fuel is at a temperature above the CP temperature for at least some period of time (Ans. 9, citing Eisenbeis ¶¶ 144 and 149). We agree with the Examiner that Eisenbeis plainly discloses a composition containing the Bx fuel and the claimed additive at a temperature above the cloud point temperature of the fuel. Appellant contends that the art does not suggest reduced filterability of Bx fuels at temperatures above their cloud points (Reply Br. 3). However, the claim language does not require an affirmative step of filtering the Bx/additive composition at an above-CP temperature. Instead, the method of claim 17 only recites adding the additive to the Bx fuel. The final clause of the claim 17—“wherein upon passing the composition through a filter at a temperature above the cloud point of the Bx fuel, the composition Appeal 2020-003296 Application 15/980,151 5 has a reduced filter blocking tendency as compared to the Bx fuel alone”— does not affirmatively recite a specific step of actually testing the Bx fuel composition at a temperature above the cloud point. Instead, the claim language simply recites that if the composition were passed through a filter at a temperature above the cloud point of the Bx fuel, the composition would have a reduced filter blocking tendency as compared to the Bx fuel alone. As we discussed in the Prior Decision, there is no dispute that Eisenbeis discloses each element of the additive composition and the Bx fuel composition recited in claim 17.3 Appellant has not demonstrated that Eisenbeis’ additive treated Bx fuel does not possess the claimed improved filterability characteristic above the cloud point of the Bx fuel compared with untreated Bx fuel. It is well established that when claimed and prior art products are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). This is true whether the rejection is under 35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), and is based on the fact that the PTO is not in a position to manufacture products or to obtain and compare prior art products. Id. In this instance, Eisenbeis discloses the step of adding the claimed additive to the Bx fuel. This is the identical process set forth in claim 17. Thus, the 3 As we also noted in the Prior Decision, the Examiner relies upon Davies for disclosing storing treated Bx fuel above the cloud point temperature (Final Act. 4). However, as stated above, Eisenbeis discloses adding the claimed additive to a Bx fuel and having that composition at a temperature above the cloud point. Accordingly, we find the relied upon teachings of Davies duplicative of the teachings of Eisenbeis. Appeal 2020-003296 Application 15/980,151 6 burden of showing that Eisenbeis’s composition would not have the property of “wherein upon passing the composition through a filter at a temperature above the cloud point of the Bx fuel, the composition has a reduced filter blocking tendency as compared to the Bx fuel alone” is on Appellant. Appellant has not met this burden. To the extent that Appellant argues that none of the cited art is concerned with filterability above the cloud point, we note that, as stated in the Prior Decision, it is not required that the applied prior art must suggest the same problem addressed by the inventors. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . The first error of the Court of Appeals in this case was . . . holding that courts and patent examiners should look only to the problem the patentee was trying to solve.”). In this case, Eisenbeis plainly teaches adding the claimed additive to a Bx fuel at a temperature above the cloud point of the fuel. Whether that was for the same or a different purpose than Appellant does not control the outcome of this appeal, which is based on the specific language of the claims. Accordingly, we conclude the preponderance of the evidence of record supports the Examiner’s rejection. Appeal 2020-003296 Application 15/980,151 7 CONCLUSION DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17–33 103(a) Eisenbeis, Davies, Dillworth 17–33 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation