Ex Parte Yen et al

Patent Trial and Appeal Board

Feb 13, 2013

12015861 (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/015,861 01/17/2008 Teh Fu Yen 3591.GOLD.PT 3135
27472 7590 02/13/2013
BATEMAN IP LAW GROUP
P.O. BOX 1319
SALT LAKE CITY, UT 84110
EXAMINER
STEIN, MICHELLE
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
02/13/2013 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 THE FU YEN and
WILLIAM TSUNG-CHIEH FAN
____________

Appeal 2012-001013
Application 12/015,861
Technology Center 1700
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-5, 7, 9-17 and
19-24. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A method for separating impurities from used oil comprising:
selecting a used oil;
selecting a polar solvent;
selecting a non-polar solvent;
mixing the used oil, polar solvent, and non-polar solvent such that the
used oil, polar solvent and non-polar solvent form a single phase mixture
and wherein the polar solvent comprises between 85 and 95 percent of the
combined volume of polar and non-polar solvent, and wherein the non-polar
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Application 12/015,861

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solvent comprises between 5 and 15 percent of the combined volume of
polar and non-polar solvent; and
separating particulate ash from the mixture of used oil polar solvent,
and non-polar solvent.

The Examiner relies upon the following references as evidence of
obviousness:
Habiby et al. (Habiby) 4,021,333 May 3, 1977
Forsberg 4,154,670 May 15, 1979

Appellants’ claimed invention is directed to a method for separating
impurities from used oil. The method entails mixing the used oil with a
mixture of a polar solvent, such as acetone, and a non-polar solvent, such as
hexane. The polar solvent comprises between 85 and 95 percent of the
combined volume of polar and a non-polar solvent.
Appealed claims 1-5, 7, 9, 10, 12, and 14-17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Habiby. Claims 11 and 13
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Habiby
in view of Forsberg.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of §103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
There is no dispute that Habiby, like Appellants, disclose a method for
separating impurities from used oil by treating the used oil with a mixture of
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Application 12/015,861

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a polar and non-polar solvent which may be acetone and hexane,
respectively (col. 3, ll. 34-56). Habiby teaches that the mixture of solvents,
or diluents, may be added to the used oil to remove insoluble impurities.
Accordingly, based on this cogent disclosure of Habiby, we find no error in
the Examiner’s legal conclusion that it would have been obvious for one of
ordinary skill in the art to perform the presently claimed method for
separating impurities from used oil.
We find no merit in Appellants’ argument that Habiby only discloses
hexane and acetone in hypothetical lists of diluents and only hypothetically
lists mixtures thereof. Habiby provides an express teaching that suitable
diluents are hydrocarbons such as naphtha and hexane and lower alkanols
such as acetone. While it is true, as argued by Appellants, that Habiby does
not exemplify a mixture of hexane and acetone, it is well settled that a
reference must be considered for all that it fairly teaches, and is not limited
to its preferred or exemplified embodiments. Appellants have presented no
convincing rationale for why one of ordinary skill in the art would not have
selected a mixture of hexane and acetone from the relatively small lists
provided by Habiby.
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
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Application 12/015,861

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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.
Appellants submit that Habiby teaches away from the claimed
invention by disclosing that “a different step, heating the used oil to high
temperatures with a strongly alkaline material such as sodium hydroxide, is
necessary to remove metallic constituents from the oil” (Prin. Br. 9, first
para.). However, Habiby does not teach that such step is necessary to
remove metallic impurities but, rather, the alkaline treatment is an optional
step which advantageously produces a concentrated, solid sludge. As
explained by the Examiner, since the reference teaches treating the used oil
with the same polar and non-polar solvents presently claimed, it logically
follows that the mixture of Habiby would necessarily remove the same
impurities as Appellants’ mixture. There is simply no factual basis for
Appellants’ argument that “ Habiby teaches that dilution and filtration of the
oil does not remove metallic constituents” (Prin. Br. 15, last para.).
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
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Application 12/015,861

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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

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