JOHN BLIZZARD et al.

Patent Trials and Appeals Board

Sep 30, 2021

2020006463 (P.T.A.B. Sep. 30, 2021)

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.
15/384,469 12/20/2016 JOHN D BLIZZARD MSH-1000 6023
8131 7590 09/30/2021
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
OYER, ANDREW J
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/30/2021 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 JOHN D. BLIZZARD, ROBERT L. MCKELLAR, and
JOAN MCMAHON
Appeal 2020-006463
Application 15/384,469
Technology Center 1700

Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY,
SHELDON M. MCGEE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–29, which constitute all the claims
pending in this application. See Final Office Action mailed Nov. 13, 2018
(Final Act.), 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the named inventors as the real parties in interest. Appeal Brief
filed April 8, 2019 as amended May 1, 2019 and May 30, 2019 (Appeal Br.),
2.
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CLAIMED SUBJECT MATTER
The claims are directed to an antifreeze composition. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A non-flammable antifreeze composition comprising
the incipient materials:
A. water;
B. a coalescent efficient glycol ether selected from a
group of materials having the general formula:
(i.) RO (CH2CH2O) yR’ or,
(ii.) RO (CH2CHO) yR’
│
CH3
wherein in (i.), RO is selected from a group consisting
of an alkoxy group of 1 to 6 carbon atoms or phenoxy;
R’ is H, or –C(O)CH2, and y has a value of 1 to 6, and
wherein in (ii.), RO is an alkoxy group or 1 to 4
carbon atoms, the phenoxy group or acetoxy group;
R’ is H or –C(O)CH3,and y has a value of 1 to 3,
wherein the boiling point of the coalescent efficient
glycol ether is 190ºC or greater at 760mm Hg;
C. a non-flammable compound selected from the
group consisting of
a. sodium formate,
b. potassium formate,
c. lithium formate
d. rubidium formate,
e. cesium formate,
f. beryllium formate,
g. magnesium formate,
h. calcium formate,
i. strontium formate,
j. barium formate,
k. mixtures of a. to j.
Appeal Br. 9 (Substitute Claims Appendix filed May 30, 2019).

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REJECTIONS
The Examiner maintains the following rejections.2 Final Act. 3–14;
Ans. 3–14.
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
1, 2, 10–15, 23–26 103 Baycroft3
3–6, 8, 9, 16–19,
21, 22, 27–29 103 Baycroft, Lievens
4
1–4, 10–17, 23–26 103 Neveling,5 Kardos6
5, 6, 18, 19 103 Neveling, Kardos, Lievens
7, 20 103 Neveling, Kardos, Yang7

OPINION
Appellant does not separately argue the patentability of claims 2–29,
and, in view of the lack of arguments directed to the subsidiary rejections,
we select claim 1 as representative and claims 2–29 stand or fall together
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv); Appeal Br. 3–8. We address below
each of the rejections of claim 1 under 35 U.S.C. § 103 over Baycroft alone
and over the combination of Neveling and Kardos.
Rejection over Baycroft
The Examiner finds Baycroft discloses an aqueous, viscoelastic fluid
gelled with a viscoelastic fluid that is inhibited against hydrate formation

2 Appellant’s After Final Amendment filed April 8, 2019, changing open
language to closed language in claim 1, has not been entered. Advisory
Action dated May 22, 2019, 2.
3 US 2006/0027369 A1, pub. Feb. 9, 2006.
4 US 2011/0006250 A1, pub. Jan. 13, 2011.
5 US 2,700,653, iss. Jan. 25, 1955.
6 US 5,104,562, iss. Apr. 14, 1992.
7 US 6,887,597 B1, iss. May 3, 2005.
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with an effective amount of an additive that includes formate salts, sugars,
and polymers. Final Act. 3. The Examiner finds Baycroft discloses salts
including sodium formate and water are useful in the composition as a brine
and that other additives can include glycol ethers such as ethylene glycol
monobutyl ether. Id. at 4.
Appellant contends the Examiner erred in finding claim 1 obvious
over Baycroft’s composition because “Baycroft appears to be non-analogous
art” and Appellant’s invention’s materials are not viscoelastic fluids that are
gelled. Appeal Br. 4. Appellant argues Baycroft is intended to be used in oil
wells and does not teach “non-flammability” or “antifreeze” characteristics.
Id. at 5–6. According to Appellant, Baycroft also “does not say anything
about glycols being coalescent efficient (that is, compatible with each other
and other components).” Id. at 5.
We are not persuaded by Appellant’s arguments.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). The Examiner has provided the record with a
preponderance of evidence including commonalities shared by the
compositions of Baycroft and claim 1 which justifies requiring Appellant to
prove that Baycroft’s composition does not necessarily or inherently possess
the claimed characteristic of comprising a “compatible” “coalescent efficient
glycol ether” and a “non-flammable . . . sodium formate.” See In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (“[T]he PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product . . . . Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
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U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.” (footnote omitted)). No such proof
has been provided by Appellant.
As the Examiner states, a chemical composition and its properties are
inseparable. Ans. 15 (citing In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990)). Therefore, Baycroft’s disclosure of a composition comprising the
recited components required by claim 1 renders the claimed composition
obvious. As the Examiner also states (Ans. 16–17), claim 1 does not
preclude Baycroft’s gelling agent; nor does the claim require any particular
amounts of the recited components to distinguish Baycroft’s water and
sodium formate that Appellant asserts (Appeal Br. 5) can be distinguished as
a brine. The reason for declining to allow a claim for subject matter that
would have been obvious under § 103 is based on the proposition that such
allowance withdraws from the public domain subject matter that those
skilled in the art should be free to use. Graham v. John Deere Co., 383 U.S.
1, 6 (1966) (patents whose effects are to remove existent knowledge from
the public domain or to restrict free access to materials already available
should not be issued). See also In re Kubin, 561 F.3d 1351, 1357–58 (Fed.
Cir. 2009) (a patent on such a structure would remove from the public that
which is in the public domain by virtue of its inclusion in, or obvious from,
the prior art); In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir.
2007) (obvious variants of prior art references are themselves part of the
public domain).
It may be true that Baycroft and Appellant set out to solve different
problems with their compositions. However, those practicing the Baycroft
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invention should be free to make a modification to that invention by
combining the components taught by Baycroft, namely, the ethylene glycol
monobutyl ether additive with the sodium formate salt and water.
Allowance of claim 1 on appeal on the record before us would preclude
those skilled in the art from practicing an obvious modified Baycroft
invention. Section 103 is designed to prevent that from happening.
In sum, we find the preponderance of the evidence supports the
Examiner’s rejection of claim 1 as unpatentable over Baycroft.
Rejection over Neveling and Kardos
The Examiner finds Neveling discloses a composition containing
water and butyl cellosolve (i.e., ethylene glycol butyl ether), Kardos teaches
a coolant comprising potassium formate, and both are in the same field of
coolant compositions. Final Act. 7 (citing Neveling Table 1; Kardos Title).
The Examiner determines it would have been obvious to add potassium
formate to Neveling’s antifreeze composition because Kardos teaches that
alkali salts of formate result in the extreme reduction in the freezing point.
Id. (citing Kardos 2:62–68).
Appellant contends the Examiner erred in finding claim 1 over the
combination of Neveling and Kardos because Neveling contains other
components which form a mixture which is a colloid. Appeal Br. 6–7.
According to Appellant, because claim 1 recites “coalescent efficient glycol
ethers,” the claim composition is not a colloid. Id.
Appellant’s arguments are not persuasive of error because claim 1
does not preclude additional components in the composition and does not
require any particular amounts of the required components. Ans. 17. In
addition, Neveling’s glycol ether fits the description of a coalescent efficient
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glycol ether because a chemical composition and its properties are
inseparable. Ans. 17; In re Spada, 911 F.2d at 709.
Although the Examiner’s rejection is based on obviousness in view of
multiple references, the burden of production is the same as discussed above
in connection with the rejection over Baycroft. Our reviewing court
explained:
This court, in reconsidering this case en banc, reaffirms
that structural similarity between claimed and prior art subject
matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and
that the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can
consist of a comparison of test data showing that the claimed
compositions possess unexpectedly improved properties or
properties that the prior art does not have . . . There is no
question that all evidence of the properties of the claimed
compositions and the prior art must be considered in
determining the ultimate question of patentability, but it is also
clear that the discovery that a claimed composition possesses a
property not disclosed for the prior art subject matter, does not
by itself defeat a prima facie case.
In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (en banc). No such
proof has been provided by Appellant.
In sum, we find the preponderance of the evidence supports the
Examiner’s rejection of claim 1 as unpatentable over the combination of
Neveling and Kardos.

CONCLUSION
On this record and for the above reasons, we affirm the Examiner’s
rejections of claims 1–29.
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DECISION
The Examiner’s decision is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/ Basis Affirmed Reversed
1, 2, 10–15,
23–26 103 Baycroft
1, 2, 10–15,
23–26
3–6, 8, 9,
16–19, 21,
22, 27–29
103 Baycroft, Lievens
3–6, 8, 9,
16–19, 21,
22, 27–29

1–4, 10–17,
23–26 103 Neveling, Kardos
1–4, 10–17,
23–26
5, 6, 18, 19 103 Neveling, Kardos, Lievens 5, 6, 18, 19
7, 20 103 Neveling, Kardos, Yang 7, 20
Overall
Outcome 1–29
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