Wednesday, February 13, 2013

Application of T.F. Yen affirmed as obvious by Patent Trial and Appeal Board

In Ex parte T.F. Yen, decided on February 13, 2013, the Patent Trial and Appeal Board [PTAB] affirmed the Examiner's rejection for obviousness of claims 1-5, 7, 9-17 and 19-24 of application 12/015,861 which was filed January 17, 2008 [and published as 20090184030 on July 23, 2009].

The key piece of prior art was Habiby, US 4,021,333, issued in 1977, more than thirty years before the application was filed. A central part of the rejection noted:

As for the recited ranges of concentrations for the polar and non-polar solvents, Habiby teaches that the ratio of diluent to oil maybe chosen so as to provide optimum separation for the insoluble impurities. Therefore, it logically follows that one of ordinary skill in the art would have also selected the optimum ratio of polar to non-polar solvent to maximize the separation of impurities from the used oil. Also, where patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change in critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In the present case, the Examiner has properly pointed out that Appellants have not proffered any objective evidence of unexpected results attached to the claimed concentrations..

IPBiz puts forth a few footnotes to the case.

By the time of the Board decision in 2013, T.F. ["Dave"] Yen had died. Specifically, Dave died on Jan. 12, 2010, at age 83, indicating he was over 80 years old when 12/015,861 was filed.

LBE is familiar with some of the work of T.F. Yen. For example, at Exxon Corporate Research in the 1980's, there was much discussion concerning a 40 Angstrom structure in petroleum asphaltenes (for Cu Kalpha radiation, a feature at 2 degrees, hence the "2 degree band.") While certain people claimed credit for discovering this, in fact, T.F. Yen had published on this feature years earlier.

Separately, LBE was critical of a certain paper of T.F. Yen relating to a supposed method of determining fractional aromaticity of petroleum asphaltenes by comparing areas of the "gamma band" and "(002) band". Matters got interesting when a later group of workers made the same assertion, but citing to different papers as justification. Publishing their work in the journal "Energy and Fuels" of the American Chemical Society, these workers actually were citing to one non-existent paper and two which were irrelevant. The saga is in part documented in a paper given at SSI-11, which includes the text:

In my own experience, I came across one episode which illustrated the inability of the scientific community to deal with each side of the coin. In a paper by D. L. Wertz and M. Bissell, Energy & Fuels, 1994, 8, 613-617 on the diffraction of the graphene layer ["(002)"] peak in bituminous coals, the authors stated that the diffraction peak was "far too intense to be caused by amorphous scattering and far too broad to be caused by conventional diffraction." The authors cited three papers to justify this assertion. Of three papers relied upon to prove the statement, which was the key assumption in the paper, one was non-existent, one was irrelevant and one supported a contrary position. Following use of
the key assumption, the authors utilized an undefined short range interference function to manipulate the x-ray diffraction data of the paper. The modified data led to a remarkable conclusion: that analysis of a peak related to interference between aromatic entities (sp2 hybridized carbon) could predict the amount of aliphatic carbon (sp3 hybridized carbon). Pertinent prior work on diffraction of "poorly crystalline" carbonaceous systems with sp2 and sp3 carbon was ignored.

I contacted the editor of the journal. Of the non-citation and mis-citation issues, nothing was done, and in fact the mis-citation was repeated in a later paper. Of the issue of arguably bad science, the key assumption was re-characterized as the existence of amorphous and crystalline phases in the coal. For reference, the "crystalline" (002) peak in one coal had a full-width at half-maximum (fwhm) of 3.4° (Cu) while the other coals had fwhm of 6-10°. Thus, the "crystalline" peak was in the range most people would consider "poorly crystalline." For example, the fwhm
(° 2θ Cu) of liquid 1,3 dimethyl adamantane is 2.75, of liquid hexadecane 5.00 and of liquid 1-methyl naphthalene 5.71. The undefined short range interference function was found to be empirical data on carbon black, which was no where presented in the paper. Thus, no reader of the paper had the information on the short range interference function to perform manipulations on the data of the paper, or on any other system.

In analyzing the cites of this paper to other papers, and the cites of other papers in this journal, I noticed that there was an interesting trend of papers in the journal to cite other papers in the same journal. In less than five years of existence, articles in the journal cited more to other articles in the journal than to articles in any other single journal, in spite of the existence of a comparable journal (Fuel) which had been in existence for more than 50 years.


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