Ex parte Smith

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.
11/890,109 	08/03/2007 	Ian D. Smith 	2156-706A 	7443
34238 	7590 	02/28/2012 	EXAMINER
ARTHUR G. SCHAIER
CARMODY & TORRANCE LLP 	TOSCANO, ALICIA
50 LEAVENWORTH STREET
P.O. BOX 1110
WATERBURY, CT 06721 	1766
ART UNIT 	PAPER NUMBER
MAIL DATE 	DELIVERY MODE
02/28/2012 	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 BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte IAN D. SMITH
Appeal 2011-003337
Application 11/890,109
Technology Center 1700
Before CHUNG K. PAK, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1through 14, all of the pending claims in the above-
identified application.1 A hearing was held on February 9, 2012. We have
jurisdiction under 35 U.S.C. § 6.
1 See Appeal Brief (“App. Br.”) filed August 25, 2010, 2; Examiner’s
Answer (“Ans.”) filed September 22, 2010, 2; and Reply Brief (“Reply Br.”)
filed November 17, 2010, 2.

Appeal 2011-003337
Application 11/890,109
STATEMENT OF THE CASE
The subject matter on appeal is directed to “aqueous hydraulic fluid
compositions, especially hydraulic fluid compositions that are suitable for
use in blowout preventer devices used to control wellhead pressure of oil
wells” (Spec. 1, ll. 4-6). Details of the appealed subject matter are recited in
representative claims 1 and 4 reproduced from the Claims Appendix to the
Appeal Brief as shown below:
1. An aqueous hydraulic fluid composition comprising:
a first lubricant comprising at least one phospholipid; and
a second lubricant comprising an alkoxylate salt;
wherein the hydraulic fluid composition is substantially
free of an oil selected from the group consisting of mineral oils,
synthetic hydrocarbon oils, and mixtures thereof.
4. The aqueous hydraulic fluid composition of claim 1
wherein the alkoxylate salt comprises a calcium, magnesium or
zinc salt of an alkoxylate selected from the group consisting of
laurates, palmitates, oleates and stearates.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer:
Mueller 	US 4,802,998 	Feb. 	7, 1989
Bigorra Llosas 	US 2004/0167232 A1 	Aug. 26, 2004
Askew 	WO 2005/075612 A1 	Aug. 18, 2005
Navarrini 	EP 1 580 320 A2 	Sep. 28, 2005
2

Appeal 2011-003337
Application 11/890,109
Appellant seeks review of the following grounds of rejection
maintained by Examiner in the Answer:
1) 	Claims 1 through 3, 7, 8, and 10 through 14 under 35 U.S.C.
§102(b) as anticipated by the disclosure of Askew;
2) 	Claims1 through 5, 7, 8, and 10 through 14 under 35 U.S.C. §
102(b) as anticipated by the disclosure of Bigorra Llosas;
3) 	Claims 1 through 8 and 10 through 14 under 35 U.S.C. § 103(a)
as unpatentable over the combined disclosures of Askew and Mueller; and
4) 	Claim 9 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Askew and Navarrini. (See App. Br. 3-4.)
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSES AND CONCLUSIONS2 3
I. 	ANTICIPATION BASED ON ASKEW
According to the Examiner at page 3 of the Answer, Askew discloses
hydraulic fluid compositions comprising phospholipids, salts of decanoic
acid/TEA corresponding to the claimed alkoxylate salt, and less than 0.01
2 The claims not separately argued stand or fall with the argued claims. See
37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to the same
ground of rejection are argued as a group by appellant, the Board may select
a single claim from the group of claims that are argued together to decide the
appeal with respect to the group of claims as to the ground of rejection on
the basis of the selected claim alone.”).
3 Any new arguments in the Reply Brief not presented in the Appeal Brief
will not be considered absent a showing of good why the arguments could
not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative).
3

Appeal 2011-003337
Application 11/890,109
weight percent of oil or substantially free of oil. Appellant does not dispute
the Examiner’s determination that the claimed alkoxylate salt embraces a
salt of a fatty acid. (Compare Ans. 3 with App. Br. 10 and Reply Br. 6-7.)
However, Appellant contends that the Examiner has not demonstrated that a
salt of a combination of decanoic acid and TEA constitutes a salt of a fatty
acid, i.e., the claimed alkoxylate salt. (See App. Br. 10 and Reply Br. 6-7.)
Thus, the dispositive question raised by the Examiner and Appellant
is: Has the Examiner demonstrated that the salt of decanoic acid/TEA
taught by Askew constitutes a salt of a fatty acid, i.e., the claimed alkoxylate
salt? 	On this record, we answer this question in the negative.
As correctly argued by Appellant at page 10 of the Appeal Brief, the
Examiner has not demonstrated that the salt of the combination of decanoic
acid/TEA exemplified in Askew includes a fatty acid salt, rather than an
amine salt having a decanoic acyl group (C16H35 NO 5). Askew describes
fatty acids as acyl groups and various amines as corrosion inhibitors. (See
Askew, pp. 7 and 9.) Nothing in Askew identified by the Examiner teaches
or suggests using decanoic acid or any other fatty acid in salt form to impart
any desired function or property to its hydraulic fluid composition. (See
Ans. 3-4.) Nor has the Examiner identified any disclosure in Askew, which
indicates the presence of unreacted decanoic acid that has been neutralized
in its hydraulic fluid composition. (Id.) Thus, on this record, we are
constrained to agree with Appellant that the Examiner has not demonstrated
that the salt of the combination of decanoic acid/TEA exemplified in Askew
includes a fatty acid salt.
4

Appeal 2011-003337
Application 11/890,109
II. 	ANTICIPATION BASED ON BIGORRA LLOSAS
Appellant does not dispute the Examiner’s finding that the
nanoemulsion compositions taught by Bigorra Llosas contain the claimed
phospholipid and alkoxylate salt. (Compare Ans. 4-5 with App. Br. 11-12.)
Nor does Appellant argue in his Appeal Brief that the preamble limitation
“aqueous hydraulic fluid” requires different proportions of phospholipid and
alkoxylate salt than those taught by Bigorra Llosas, requires additional
ingredients not taught by Biorra Llosas, and/or excludes any requisite (not
optional) ingredients taught by Biorra Llosas. (See App. Br. 11-12.) Rather,
Appellant contends that Bigorra Llosas does not teach using either no oil or
substantially no oil in its nanoemulsion composition as required by claims 1
through 3, 7, 8, and 10 through 14. (Id.) In support of this position,
Appellant relies upon the written description of one of the prior art
references relied upon by the Examiner, namely Askew, to show that one of
ordinary skill in the art would have understood the term “substantially free
of oil” as something less than 0.01 weight percent of the oil. (See App. Br.
12.)
Thus, the dispositive question is: Has the Examiner demonstrated
that Bigorra Llosas teaches a nanoemulsion composition “substantially free
of oil selected from the group consisting of mineral oils, synthetic
hydrocarbon oils, and mixtures thereof” as required by claims 1 through 3, 7,
8, and 10 through 14 within the meaning of 35 U.S.C. § 102(b)? On this
record, we answer this question in the affirmative.
5

§
Appeal 2011-003337
Application 11/890,109
As correctly found by the Examiner at page 4 of the Answer, Bigorra
Llosas teaches employing a Guerbet alcohol, in lieu of a mineral oil in its
nanoemulsion composition. Specifically, Bigorra Llosas teaches employing
mineral oils and/or Guerbet alcohols in its nanoemulsion compositions. (See
Bigorra Llosas, Abstract and pp. 3-4, paras. 0047 and 0055.)
Given the three options from which Guerbet alcohols can be selected,
we concur with the Examiner that one of ordinary skill in the art would have
readily envisaged a nanoemulsion composition containing Guerbet alcohols
and no oils, i.e., “substantially free of oil,” from the teachings of Bigorra
Llosas within the meaning of 35 U.S.C. §102(b). See In re Schaumann, 572
F.2d 312 (CCPA 1978) (When the prior art discloses a genus, a species of
that genus may be anticipated when the species is part of a well delineated or
limited class.); In re Petering, 301 F.2d 676, 682 (CCPA 1962)(A small
genus can be a disclosure of each species within the genus.)
In making this finding, we have considered Appellant’s reliance on
the first and second Declarations of record executed by Ian Smith on
February 23, 2010 and July 1, 2010, respectively to show that the claimed
subject matter imparts unexpected results. (See App. Br. 4-9 and Reply Br.
4-6.) However, as stated by the predecessor to our reviewing court in In re
Malagari, 499 F.2d 1297, 1302 (CCPA 1974), “If the rejection under [ ]
102 is proper…, appellant cannot overcome it by showing such unexpected
results or teaching away in the art, which are relevant only to an obviousness
rejection.” See also In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)
(Evidence of unexpected results cannot overcome a rejection based on
anticipation.)
6

Appeal 2011-003337
Application 11/890,109
Appellant separately contends that Bigorra Llosas does not anticipate
the particular alkoxylate salt recited in claims 4 and 5 within the meaning of
35 U.S.C. §102(b). (App. Br. 13.)
Thus, with respect to claims 4 and 5, the dispositive question raised by
the Examiner and Appellant is: Has the Examiner demonstrated that Bigorra
Llosas describes the particular alkoxylate salt recited in claims 4 and 5 with
sufficient specificity to meet the anticipation requirement of 35 U.S.C.
§102(b)? On this record, we answer this question in the negative.
As correctly argued by Appellant at page 13 of the Appeal Brief,
Bigorra Llosas discloses a long list of possible additives, including
stabilizers corresponding to the specific alkoxylate salt recited in claims 4
and 5, that may be included in its nanoemulsion composition depending on
its applications. (See Bigorra Llosas, pp. 4-5, paras. 0060, 0071 and 0072.)
Some picking and choosing of ingredients from the myriad of possible
additives listed in Bigorra Llosas depending on the application of a
nanoemulsion composition is necessary to arrive at a nanoemulsion
composition containing the specific alkoxylate salt recited in claims 4 and 5.
As stated in In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972):
[F]or the instant rejection under 35 U.S.C. § 102(e) to
have been proper, the [prior art] reference must clearly and
unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures…. 	Such picking
and choosing may be entirely proper in the making of a 103,
obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of
obviousness…, but it has no place in the making of a 102,
anticipation rejection.
7

Appeal 2011-003337
Application 11/890,109
Under these circumstances, we concur with Appellant that the
Examiner has not demonstrated that Bigorra Llosas describes the particular
alkoxylate salt recited in claims 4 and 5 with sufficient specificity to meet
the anticipation requirement of 35 U.S.C. §102(b). See Atofina v. Great
Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (When a prior art
reference teaches a large range (corresponding to a large genus) that
encompasses, among other things, the claimed narrow range (corresponding
to a few species), “no reasonable fact finder could conclude that the prior art
describes the claimed range [i.e., the claimed species,] with sufficient
specificity to anticipate this limitation of the claim.”); Schaumann, 572 F.2d
at 315 (The prior art reference must identify each and every element as set
forth in the claim “with sufficient specificity to constitute a description
thereof within the purview of 35 U.S.C. § 102[(b)]”).
III. 	OBVIOUSNESS BASED ON ASKEW AND MUELLER
Askew, like Appellant, discloses an aqueous hydraulic fluid
composition for use in Blow-Out Preventor (BOP) stack, a hydraulically
operated safety device, used in drilling for subsea oil. (Compare Askew, p.1
with Spec. 1-2.) Appellant does not dispute the Examiner’s finding at page 5
of the Answer that Askew teaches an aqueous hydraulic fluid composition
comprising a phospholipid as a primary lubricant, a non-phospholipid
lubricant as an additional lubricant, a corrosion inhibitor (benzotriazoles), a
biocide (e.g., guanidines), an anti-freeze additive (e.g., monoethylene glycol)
and less than 0.01 weight percent of oil or substantially free of oil.
(Compare Ans. 5 with App. Br. 13-17 and Reply Br. 11-16; compare also
8

Appeal 2011-003337
Application 11/890,109
Askew, pp. 8-10 and 12 with claims 1-8 and 10-14.) Rather, Appellant
contends that one of ordinary skill in the art would not have been led to
employ an alkoxylate salt, such as calcium stearate, in the aqueous hydraulic
fluid composition taught by Askew. (See App. Br. 13-17 and Reply Br. 11
16.)
Thus, the first critical question raised by the Examiner and Appellant
is: Would one of ordinary skill in the art have been led to employ an
alkoxylate salt, such as calcium stearate, as the additional non-phospholipid
lubricant of the aqueous hydraulic composition taught by Askew within the
meaning of 35 U.S.C. §103(a)? 	On this record, we answer this question in
the affirmative.
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] 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. [(Emphasis added.)]
See also In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”).
The common knowledge attributable to one of ordinary skill in the art
includes what was admittedly known in the art by Appellant at the time of
the invention. See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The
9

Appeal 2011-003337
Application 11/890,109
admitted prior art in applicant’s Specification may be used in determining
the patentability of a claimed invention.); see also In re Davis, 305 F.2d 501,
503 (CCPA 1962).
Here, as correctly found by the Examiner at pages 5, 6, and 11 of the
Answer, Mueller teaches that calcium stearate is a known lubricant used to
impart lubricant properties to a water-based fluid in the oil drilling art.
Appellants also acknowledge at pages 2 and 3 of the Specification that such
known calcium stearate lubricant was also known to be environmentally safe
and can be discharged offshore (listed on the PLONOR list of acceptable
substances) at the time of the invention. Askew teaches the desirability of
employing environmentally friendly lubricants, with the primary lubricant
being a phospholipid lubricant in its aqueous (water-based) hydraulic fluid
composition used in the oil drilling art (p. 5, ll. 1-6 and 14-18).
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the claimed calcium
stearate (alkoxylate salt) taught by Mueller as the secondary lubricant of the
aqueous hydraulic composition taught by Askew, with a reasonable
expectation of successfully imparting desired environmentally acceptable
lubricant properties. See KSR, 550 U.S. at 417 (quoting Sakraida v. Ag
Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”) ).
Appellant contends that the claimed subject matter imparts
unexpected results, thereby rebutting any inference of obviousness
10

Appeal 2011-003337
Application 11/890,109
established by the Examiner. (See App. Br. 4-9 and 15-16 and Reply Br. 4-5
and 13-14.) In support of this contention, Appellant relies upon the two
Declarations of record executed by Ian Smith on February 23, 2010 and July
1, 2010, respectively and Examples 1 through 3 in the Specification. (Id.)
Thus, the second critical question is: Has Appellant demonstrated that
the claimed subject matter as a whole imparts unexpected results? 	On this
record, we answer this question in the negative.
It is well established that Appellant bears the burden of showing that
the claimed invention imparts unexpected results. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Such burden requires Appellant to provide a showing that is actually
unexpected and is reasonably commensurate with the scope of protection
sought by the claims on appeal. See Klosak, 455 F.2d at 1080; In re
Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035 (CCPA 1980).
Here, as correctly found by the Examiner at pages, 7, 8, and 11 of the
Answer, Appellant has not demonstrated that the claimed subject matter
imparts unexpected results. The Examples in the Specification, in particular
Example 1 at pages 9 and 10 of the Specification, show that the improved
torque performance based on the maximum applied load is dependent on the
amount of a lubricant used in aqueous hydraulic fluid compositions.
Appellant has not shown that one of ordinary skill in the art would not have
reasonably expected such torque performance improvement under the Falex
test from using more lubricants on a rotating test pin (i.e., employing a better
lubricated rotating pin). Appellant has not shown that an aqueous hydraulic
11

Appeal 2011-003337
Application 11/890,109
composition containing 14% of lubricating materials (i.e., 7% of lecithin (a
phospholipid lubricant) and 7% of calcium stearate (second lubricant))
supposedly representative of the claimed subject matter imparts better torque
performance than that obtained by using an aqueous hydraulic composition
containing the same amount of the single lubricant material (i.e., 14% of
lecithin) supposedly representative of the prior art.
Appellant’s reliance on the first and second Declarations of record
executed by Ian Smith also does not remedy the deficiencies in the showing
in the Specification. The hydraulic fluid compositions containing 0.5% or
1% calcium stearate, 50% or 66% monoethylene glycol (MEG), and 49.5%
or 33% water and containing 0.5% or 1% calcium stearate and 99.55% or
99% water referred to in the first and second Declarations executed by Ian
Smith are not relevant to the claimed subject matter or the subject matter
exemplified at page 15 of Askew or the subject matter preferred at page 16
of Askew. The hydraulic fluid compositions containing 7% calcium
stearate, 62% monoethylene glycol, 6% phosphate salt and 25% water
referred to in the second Declaration executed by Ian Smith indicates that
the maximum applied load for its torque performance is about 1100 pound
whereas the hydraulic fluid compositions containing 7% lecithin, 62%
monoethylene glycol, 6% phosphate salt and 25% water referred to in
Example 1 of the Specification indicates that the maximum applied load for
its torque performance is about 1400 pound. Yet, the hydraulic fluid
compositions containing 7% lecithin and 7% calcium stearate (14 percent
lubricant material) referred to in the second Declaration and Example 1 of
the Specification show that the maximum applied load for their torque
12

Appeal 2011-003337
Application 11/890,109
performances are about 2500 pounds, the additive effect of using 14% of the
lubricant material which would be reasonably expected by one of ordinary
skill in the art.
Moreover, Appellant has not shown that this showing is
commensurate in scope with the protection sought by the claims on appeal.
While the showing in the Declarations and Specification is limited to the
couple specific hydraulic fluid compositions containing 7% lecithin, 7%
calcium stearate, 6% phosphate and the remaining amount of water, with or
without monoethylene glycol, the claims are not so limited. In particular,
the claims include a myriad of phospholipid compounds, including those
materially different from lecithin, and a myriad of alkoxylate salts, including
those materially different from calcium stearate, in amounts significantly
outside of those shown in the Declarations and the Specification. As
explained by our reviewing court in In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005):
The Board also correctly reasoned that the showing of
unexpected results is not commensurate in scope with the
degree of protection sought by the claimed subject matter
because the elemental composition of CMSX®-486 is at or near
the midpoint of the claimed range. While Harris's evidence
may show a slight improvement over some alloys, the record
does not show that the improved performance would result if
the weight-percentages were varied within the claimed ranges.
Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range.
Accordingly, based on the totality of record, including due
consideration of Appellant’s arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
13

Appeal 2011-003337
Application 11/890,109
the subject matter recited in claims 1 through 8 and 10 through 14 within the
meaning of 35 U.S.C. § 103(a).
IV. 	OBVIOUSNESS BASED ON ASKEW AND NAVARRINI
We are constrained to reverse the Examiner’s § 103 rejection of claim
9 based on Askew and Navarrini for the reasons explained above. As
indicated supra, the Examiner has not demonstrated that Askew teaches or
would have suggested using an alkoxylate salt in its aqueous hydraulic fluid
composition. Although the Examiner relies on Navarrini for teaching borax
decahydrate as a known biocide, the Examiner has not demonstrated, much
less asserted, that Navarrini teaches an alkoxylate salt or its use in an
aqueous hydraulic fluid composition. Thus, the combination proposed by
the Examiner would not result in the claimed invention within the meaning
of 35 U.S.C. § 103.
ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting claims 1
through 3, 7, 8, and 10 through 14 under 35 U.S.C. §102(b) as anticipated by
the disclosure of Askew is REVERSED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1through 3, 7, 8, and 10 through 14 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Bigorra Llosas is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 4 and 5 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Bigorra Llosas is REVERSED;
14

Appeal 2011-003337
Application 11/890,109
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1 through 8 and 10 through 14 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Askew and Mueller is
AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claim 9 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Askew and Navarrini is REVERSED; and
FURTHER ORDERED that 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)(v).
AFFIRMED-IN-PART
kmm
15