Tuesday, February 12, 2013

Shell Oil loses at Board

Shell Oil lost its appeal to the Board in Ex parte DUIJGHUISEN.

The decision mentioned calculations made using the ideal gas law BUT

As the Supreme Court has pointed out, however, “the mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230 (1976).

Thus, while Appellants have, as noted above, pointed out the differences between claim 1 and the references cited by the Examiner, Appellants provide no clear or specific explanation as to why the cited references would have failed to suggest the claimed process to an ordinary artisan.

As to routine optimization:

Thus, despite the differences in the volumes of stripping gas used in claim 1 as compared to Gupta and Valbert, given the similarities between the prior art processes and the claimed process, and the general teachings in the prior art that applying stripping gas removes undesired byproducts, we agree with the Examiner that, absent evidence to the contrary, an ordinary artisan would have reasoned that the volumes of gas recited in claim 1 would have been useful for removing undesired byproducts from the polyether polyols produced using a DMC catalyst. Moreover, Appellants point to no clear or specific evidence undercutting the Examiner’s finding that an ordinary artisan, advised by Jochem Brons, Gupta, and Valbert of the desirability of stripping crude polyether polyol products with inert gases, would have considered it a matter of routine optimization to determine suitable volumes of gas to use.

Unexpected results arose:

As the Federal Circuit has explained, “[w]here ‘the difference between the claimed invention and the prior art is some range or other variable within the claims . . ., the [applicants] must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results.’” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)); see also Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (claimed device that differed from the prior art with respect to dimensional limitations but performed and operated in the same manner as the prior art device held obvious).

The result:

In sum, as Appellants’ arguments do not persuade us that the Examiner failed to make out a prima facie case of obviousness as to claim 1, and as Appellants have not advanced evidence of unexpected results adequate to outweigh the Examiner’s evidence of prima facie obviousness, we affirm the Examiner’s rejection of claim 1 over Jochem Brons, Gupta, and Valbert. Claims 2-8 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

In re Aller is cited:

Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (id. at 6 (citing In re Aller, 220 F.2d 454)).


Post a Comment

<< Home