NESTE CORPORATION

Patent Trials and Appeals Board

Mar 4, 2022

2022000418 (P.T.A.B. Mar. 4, 2022)

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. 15/566,396 10/13/2017 Jaana MAKKONEN 1034456-000385 1480 21839 7590 03/04/2022 BUCHANAN, INGERSOLL & ROONEY PC 1737 KING STREET SUITE 500 ALEXANDRIA, VA 22314-2727 EXAMINER BOYER, RANDY ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 03/04/2022 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAANA MAKKONEN and MIKA P. KETTUNEN ____________ Appeal 2022-000418 Application 15/566,396 Technology Center 1700 ____________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, 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 finally rejecting claims 1-4, 6-14, and 16-28, which constitute all the claims pending in this application. Claims 5 and 15 have 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Neste Corporation. Appeal Br. 1. Appeal 2022-000418 Application 15/566,396 2 been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). A video hearing was held on February 24, 2022.2 We AFFIRM. The invention “relates to the field of producing traffic fuels and base oil components.” Spec. 1. Claim 1 illustrates the invention and is reproduced below from the Appeal Brief’s Claims Appendix (formatting added): 1. A method of producing oil-based components, comprising: providing VGO and slack wax; combining the VGO as a first component and the slack wax as a second component to provide a feedstock so that the feedstock includes at most 30 wt.% slack wax and the balance being VGO such that the VGO and the slack wax are the only components of the feedstock, the slack wax being an unpurified slack wax obtained from solvent dewaxing of a waxy petroleum feed; subjecting the feedstock having the unpurified slack wax to hydrocracking to provide a first effluent; fractionating the first effluent to provide at least a bottom fraction and a middle distillate fraction; and recovering the bottom fraction and the middle distillate fraction. Independent claim 3 is directed to a method of for improving the viscosity index of base oil that comprises steps similar to the ones recited in independent claim 1, but including other features. Independent claim 12 is directed to an apparatus to practice the method of claim 1. Appellant requests review of the Examiner’s rejection of claims 1-4, 6-14, and 16-28 under 35 U.S.C. § 103 as unpatentable over Duininck (US 2 A transcript of the video hearing will be entered into the record when available. Appeal 2022-000418 Application 15/566,396 3 2007/0175794 A1, published August 2, 2007), Boucher Ashe (US 2004/0245147 A1, published December 9, 2004), Daage (US 2014/0042056 A1, published February 13, 2014), and Miller (US 2004/0256287 A1, published December 23, 2004). Appeal Br. 9; Non-Final Act. 4. Appellant relies on a similar line of arguments to address the rejections of independent claims 1, 3, and 12. See generally Appeal Br. However, Appellant presents additional arguments for independent claim 12. See generally id. Accordingly, we select claim 1 as representative of the subject matter claimed and decide the appeal as to all grounds of rejections based on the arguments presented for claims 1 and 12. OPINION After review of the respective positions the Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Office Action and the Answer, we affirm the Examiner’s prior art rejection of claims 1-4, 6-14, and 16-28 for the reasons the Examiner presents. We add the following for emphasis. Independent Claim 1 Claim 1 recites a method of producing oil-based components by hydrocracking a feedstock comprising vacuum gas oil (VGO) and unpurified slack wax. The Examiner finds Duininck discloses a method of producing oil- based components using paraffin wax that differs from the claimed invention in that Duininck does not explicitly disclose that the paraffin wax is a slack wax. Non-Final Act. 4. The Examiner finds that Duininck instead uses a paraffin wax that is a Fischer-Tropsch wax. Id. The Examiner finds that the Appeal 2022-000418 Application 15/566,396 4 prior art, as represented by Boucher Ashe (Abstr., ¶ 16), Daage (Abstr., ¶¶ 15, 42), and Miller (Abstr., ¶ 31), teaches that Fischer-Tropsch (“F-T”) waxes and slack waxes are suitable alternatives to each other in similar processes. Non-Final Act. 4-5. The Examiner determines it would have been obvious to one skilled in the art to use the prior art slack wax in place of Duininck’s F-T wax in view of their recognition in the art as equivalents for producing oil-based components. Non-Final Act 5. Appellant argues Duininck’s combination of F-T wax and mixture of petroleum derived oils does not teach or suggest the claimed unpurified slack wax as an option for producing base oil grades and middle distillates. Appeal Br. 12; Duininck ¶¶ 21, 24. According to Appellant, unpurified slack wax is not a known substitute for F-T wax because such a slack wax has a significant level of impurities compared to an F-T wax. Id. at 13 (citing to Makkonen Declaration3). Appellant further contends that the prior art references citing F-T waxes and slack waxes as preferred waxes for the disclosed process are insufficient to establish the two waxes as equivalents because the references do not specifically state that these waxes are interchangeable. Id. at 13, 15, 16. In addition, Appellant contends that Boucher Ashe (¶¶ 16-17), Daage (¶ 19), and Miller (¶¶ 33-34) use purified slack waxes in their processes because their respective processes are directed to highly purified feedstocks. Appeal Br. 14-16. Appellant’s arguments do not identify reversible error in the Examiner’s determination of obviousness. 3 The Declaration under 37 C.F.R. § 1.131 by co-inventor Jaana Makkonen was submitted on June 15, 2020 (hereinafter referred to as “Makkonen Declaration” or “Decl.”) and entered into the record by the Examiner in the Final Office Action dated November 4, 2020. Appeal 2022-000418 Application 15/566,396 5 Appellant’s arguments raise two issues associated with the prior art disclosure of F-T waxes and slack waxes. The first issue is whether the prior art recognizes these two waxes as suitable alternatives to each other. If the answer to the first issue is in the affirmative, we need to address a second issue of whether the prior art disclosure of slack waxes includes the use of unpurified slack waxes. With respect to the first issue, Appellant’s assertion that the noted disclosures of the secondary references do not teach F-T waxes and slack waxes as equivalent waxes for a process of producing oil-based components is unsupported by objective evidence. As the Examiner finds, the secondary references expressly disclose that F-T waxes and slack waxes are known alternatives to each other for the purpose of producing oil-based components. Ans. 6-7. One skilled in the art would have reasonably inferred from these disclosures that F-T waxes and slack waxes are suitable substitutes for each other for producing oil-based components. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992) (holding that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appellant fails to explain adequately why one skilled in the art would not have understood that F-T waxes and slack waxes are suitable alternative to each other from the noted disclosures. Thus, absent objective evidence, Appeal 2022-000418 Application 15/566,396 6 Appellant’s arguments are merely attorney’s arguments that cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). We now turn to the second issue of whether the prior art teachings of slack waxes include unpurified slack waxes. Appellant argues Boucher Ashe uses purified, deoiled (refined) slack waxes as opposed to the claimed unpurified slack waxes and, thus, teaches away from the claimed invention. Appeal Br. 14; Boucher Ashe ¶ 16. Appellant further contends Daage and Miller use purified slack waxes because they disclose purified feed stocks. Appeal Br. 15; Daage ¶ 19; Miller ¶¶ 33-34. The Examiner’s position is that the use of the plural “slack waxes” by the cited art means that it includes purified and unpurified slack waxes. Ans. 6-8. Boucher Ashe discloses that “[s]lack waxes contain some residual oil and are typically deoiled.” Boucher Ashe ¶ 16. Based on the use of the word “typically,” this disclosure suggests to one skilled in the art that Boucher Ashe prefers to use deoiled slack waxes but does not necessarily exclude use of slack waxes containing residual oil (unpurified slack waxes). In other words, Boucher Ashe contemplates embodiments where unpurified slack waxes would be used to make oil-based components. Daage discloses In embodiments involving an initial sulfur removal stage prior to hydrocracking, the sulfur content of the feed can be at least 300 ppm by weight of sulfur, or at least 1000 wppm, or at least 2000 wppm, or at least 1000 wppm, or at least 10,000 wppm, or at least 20,000 wppm. In other embodiments, including some embodiments where a previously hydrotreated Appeal 2022-000418 Application 15/566,396 7 and/or hydrocracked feed is used, the sulfur content can be 2000 wppm or less, or 1000 wppm or less, or 500 wppm or less, or 100 wppm or less. Daage ¶ 19. Appellant relies on this disclosure to suggest that Daage uses purified slack wax in the disclosed process because “Daage makes clear [in the noted disclosure] that a feed should be purified to remove impurities before undergoing hydrocracking to ensure the feed can be appropriately processed.” Appeal Br. 15. However, Daage’s paragraph 19 clearly refers to “some embodiments,” which suggests to one skilled in the art that Daage does not necessarily exclude unpurified slack waxes from also being used. In other words, Daage contemplates other embodiments where unpurified slack waxes would be used to make oil-based components. With respect to Appellant’s reliance on paragraphs 33 and 34 of Miller (Appeal Br. 15-16), these paragraphs address an embodiment involving F-T waxes. It is not clear how this disclosure applies as to whether unpurified waxes can be used in Miller’s process. In fact, paragraph 32 of Miller suggests that purifying of waxes is an optional step in Miller’s process. That is, Miller appears to embrace using unpurified waxes, of which slack waxes are an option. Miller ¶ 31. While the prior art disclosures noted above exemplify embodiments where the waxes used in producing oil-based components are preferably purified beforehand, these disclosures are not limited to purified waxes as Appellant argues. It is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll Appeal 2022-000418 Application 15/566,396 8 disclosures of the prior art, including unpreferred embodiments, must be considered.”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is not limited to its examples). The disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Therefore, after full consideration of the prior art disclosures and Appellant’s arguments and evidence, including the Makkonen Declaration, we decline to limit the teachings and suggestions of Boucher Ashe, Daage, and Miller to the exemplary embodiments where purified waxes are used to make oil-based components. Moreover, dependent claim 7 recites “subjecting the feedstock [comprising VGO and unpurified slack wax] to hydrotreatment before the hydrocracking” (emphasis added). Thus, claim 1, written in open language, would then appear to be a generic claim also encompassing an embodiment where the unpurified slack is purified before being hydrocracked.4 If so, it is not clear how the claimed invention distinguishes from the teachings of the cited art. Thus, based on the above, the prior art disclosures support the Examiner’s reasoning that the use of the plural “slack waxes” by the cited art means that it includes purified and unpurified slack waxes. Ans. 6-8. 4 We note that the subject matter of claim 7 raises an indefiniteness issue in claim 1 because the subject matter of claim 1 recites subjecting the feedstock having the unpurified slack wax to the hydrocracker. Thus, the claims seem to be inconsistent. If prosecution of the ’396 Application continues, the Examiner should determine whether a rejection under § 112 is warranted. Appeal 2022-000418 Application 15/566,396 9 Appellant argues Boucher Ashe’s process for producing base oils differs from the processes of claim 1 in that the feedstock of Boucher Ashe’s feedstock is not a combination of two different oils as claimed. Appeal Br. 14. This argument is unpersuasive of reversible error in the Examiner’s conclusion of obviousness for the reasons the Examiner presents. Ans. 8-9. Moreover, the Examiner relies on Boucher Ashe for a teaching of unpurified slack waxes as a component for a feedstock to make oil-based components and not for the teaching of a feedstock comprising two oils. Non-Final Act. 4. Instead, the Examiner relies on the teachings of Duininck for the latter feature. Id. We have considered fully Appellant’s arguments that the Examiner benefitted of impermissible hindsight in combining the teachings of the cited art to arrive at the claimed invention. Appeal Br. 17. These arguments also lack persuasive merit because the cited art disclosures we discuss above provide a reasonable basis for on skilled in the art to use unpurified slack waxes in Duininck’s process with the reasonable expectation that such unpurified slack waxes would be suitable for Duininck’s purposes. See In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). Appellant argues the Makkonen Declaration shows the Examiner cannot arrive at the claimed invention from the combined teachings of the cited art. Appeal Br. 18. As we note above, we have considered the Makkonen Declaration in full but find it unpersuasive. The Makkonen Declaration includes a number of statements, consistent with the arguments considered, where Declarant Appeal 2022-000418 Application 15/566,396 10 discusses the undesirability of unpurified slack waxes for Duininck’s process. See Decl. ¶¶ 7-12. The Makkonen Declaration also includes statements by Declarant criticizing Boucher Ashe, Daage, and Miller. Id. ¶¶ 15-20. However, Declarant’s statements do not account for the fact that the references encompass embodiments that use unpurified slack waxes, as we discuss above. While Declarant direct us to statements in the Specification as showing evidence of improvement resulting from the inventive process (Decl. ¶ 13; Spec. 5), the highlighted statements are unsupported by objective evidence and fail to recognize the improvement as unexpected. Thus, the Makkonen Declaration is insufficient to overcome a prima facie case of obviousness. Likewise, the granted European patent is insufficient to overcome a prima facie case of obviousness, as Appellant argues, for the reason the Examiner presents. Appeal Br. 19; Ans. 15. Independent claim 12 As we note above, Appellant relies on a line of arguments similar to the arguments presented for claim 1 to address the rejection of independent claim 12 and presents additional arguments for this claim. See generally Appeal Br. To the extents that Appellant relies on arguments we address above, we direct Appellant’s attention to our previous discussion of these arguments. We find these common arguments also unpersuasive of reversible error in the Examiner’s determination of obviousness for the reasons the Examiner presents and we give above. We now turn to Appellant’s additional arguments for this claim. Appeal 2022-000418 Application 15/566,396 11 Claim 12 recites an apparatus for producing oil-based components comprising a hydrocracking reactor having at least one inlet for supplying a feedstock that includes VGO and slack wax. We refer to the Examiner’s Non-Final Office Action for a complete statement of the rejection of claim 12. Non-Final Act. 4. See also Ans. 8. Appellant does not contest that Duininck teaches an apparatus comprising a hydrocracker and a hydrocarbon feed line. See generally Appeal Br.; Duininck Figure 1, ¶ 55. Instead, Appellant argues that Duininck’s apparatus does not use the feed line for a feedstock that includes VGO and slack wax feed as claimed. Appeal Br. 20-21. Appellant’s argument does not identify error in the Examiner’s determination of obviousness for the reasons the Examiner presents. Ans. 8. The premise of Appellant’s argument is that the claimed apparatus is different from Duininck’s apparatus because of the type of feedstock used in the claimed invention. As we not above, claim 12 recites an apparatus. It is well-settled that the patentability of an apparatus or article of manufacture claim depends on the claimed structure. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re Danly, 263 F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus must distinguish from the prior art in terms of structure rather than function.”). Moreover, language in an apparatus claim directed to the function, operation, intent-of-use, and materials upon which these apparatus components work, that does not structurally limit the apparatus components or patentably differentiate the claimed apparatus from an otherwise identical prior art apparatus, will not support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA Appeal 2022-000418 Application 15/566,396 12 1952); In re Otto, 312 F.2d 937, 940 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973). Appellant fails to explain adequately how the claimed feedstock structurally limits the apparatus components. Thus, Appellant fails to show reversible error in the Examiner’s determination of obviousness. Arguments not specifically addressed are deemed not persuasive for the reasons the Examiner presents. Accordingly, we affirm the Examiner’s rejection of claims 1-4, 6-14, and 16-28 under 35 U.S.C. § 103 for the reasons the Examiner provides and we give above. CONCLUSION The Examiner’s prior art rejection of claims 1-4, 6-14, and 16-28 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-14, 16-28 103 Duininck, Boucher Ashe, Daage, Miller 1-4, 6-14, 16-28 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