Appeal 2007-1395
Application 10/328,115
particulate emissions occurs by using a ‘fuel-water emulsifier’ with the
cooling effect of water in the fuel” (Br. 6).
Appellant's contentions are not persuasive. By virtue of using the
transitional language “comprising” in the claims on appeal, Appellant does
not preclude the presence of water in the claimed fuel additive. In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as
one of the monomers in the reaction is propylene, any other monomer may
be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”). Thus, a person of ordinary skill in the art utilizing
the fuel additive composition described by Boehmke would have been
practicing the claimed invention. Mehl/Biophile Int'l Corp. v. Milgraum,
192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) (“Where, as
here, the result is a necessary consequence of what was deliberately
intended, it is of no import that the article’s authors did not appreciate the
results.”); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a
new benefit of an old process cannot render the process again patentable.”);
accord In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990).
The obviousness rejections.
Claims 1 and 11-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lin. We affirm.
The issue presented for review with respect to this rejection is: Does
the Lin reference have a disclosure that would have led a person of ordinary
skill in the art to perform the method for operating an internal combustion
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