Afton Chemical CorporationDownload PDFPatent Trials and Appeals BoardOct 29, 20212021001557 (P.T.A.B. Oct. 29, 2021) Copy Citation 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. 15/613,696 06/05/2017 Kristin Fletcher AFTON-1638US 5422 22186 7590 10/29/2021 MENDELSOHN DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 910 PHILADELPHIA, PA 19102 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 10/29/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@mendelip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISTIN FLETCHER, PAUL RANSOM, and GUILLAUME CARPENTIER Appeal 2021-001557 Application 15/613,696 Technology Center 1700 Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–3, 6–9, 11, 12, 14–17, and 19. An 1 In this Decision, we refer to the Specification filed June 5, 2017 (“Spec.”); the Final Office Action dated February 25, 2020 (“Final Act.”); the Appeal Brief filed August 25, 2020 (“Appeal Br.”); the Examiner’s Answer dated October 28, 2020 (“Ans.”), and the Reply Brief filed December 28, 2020 (“Reply Br.”). 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Afton Chemical Corporation. (Appeal Br. 1.) Appeal 2021-001557 Application 15/613,696 2 oral hearing was held on September 28, 2021, a transcript of which is of record (hereinafter cited as “Tr.”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a method for reducing timing chain stretch of a timing chain in an engine comprising a step of lubricating the timing chain with a lubricating oil composition. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for reducing timing chain stretch of a timing chain in an engine comprising a step of lubricating said timing chain with a lubricating oil composition comprising: greater than 70 wt.% of a base oil; and an additive package including detergents consisting essentially of: a) at least one overbased calcium phenate detergent having a total base number of at least 150 mg KOH/g, measured by the method of ASTM D-2896 in an amount to provide 600 ppm to 1500 ppm of calcium based on a total weight of the lubricating oil composition; b) at least one overbased calcium sulfonate detergent having a total base number of at least 225 mg KOH/g, measured by the method of ASTM D-2896 in an amount to provide 100 ppm to 900 ppm of calcium based on a total weight of the lubricating oil composition; and c) at least one magnesium sulfonate detergent in an amount to provide 250 ppm to 1480 ppm of magnesium based on a total weight of the lubricating oil composition; wherein the total amount of calcium in the lubricating oil composition is from 1200 ppm to 2000 ppm, the lubricating oil composition has a weight ratio of total calcium from the at least one calcium sulfonate detergent to total calcium Appeal 2021-001557 Application 15/613,696 3 and magnesium in the lubricating oil composition of from 0.06 to 0.35, and the lubricating oil composition is capable of reducing the timing chain stretch in an engine to 0.1 % or less, as measured by the Ford Chain Wear Test over 216 hours. Appeal Br. 16 (Claims Appendix). Appellant appeals the rejection of claims 1–3, 6–9, 11, 12, 14–17, and 19 under 35 U.S.C. §103 as unpatentable over Mosier (WO 2015/042340 A1, published Mar. 26, 2015) in light of the evidence provided by Esche (US 2016/0326451 A1, published Nov. 10, 2016). OPINION After review of the respective positions Appellant and the Examiner provide, we determine that Appellant has not demonstrated reversible error in the Examiner’s rejection under 35 U.S.C. § 103. We adopt the Examiner’s reasoning as our own and add the following. We limit our discussion to independent claim 1 and dependent claims 5 and 7. Claim 1 Appellant argues “the present invention is drawn to a method (i.e., all claims are limited to a method, not a composition) for reducing timing chain stretch in an engine comprising a step of lubricating the timing chain with a lubricating oil composition.” (Appeal Br. 5.) Appellant has not argued that the process of lubricating an engine comprising a timing chain with a lubricating oil composition was unknown to persons of ordinary skill in the art. See generally Appeal Br. In fact, during the oral hearing on September 28, 2021, Appellant’s representative specifically stated: Yes, we’re not arguing that treating, that lubricating an engine with a lubricating composition is novel. What we’re arguing is that what is novel is a particular composition of Appeal 2021-001557 Application 15/613,696 4 lubricating oil being used in the method which has shown to provide an unexpected advantage in reducing the stretch of the timing chain of the engine. (Tr. 3–4.) Appellant’s arguments are limited to the composition utilized in the claimed method. (See generally Appeal Br.) Appellant argues the skilled artisan would not have found the invention of claim 1 to be obvious from Mosier due to the nature and number of selections necessary in formulating the lubricating oil composition. (Appeal Br. 5–6, 19.) Appellant further argues the prior art does not teach or suggest that the weight ratio of total calcium from the at least one calcium sulfonate detergent to total calcium and magnesium (CaSulf/Ca+Mg ratio) in the lubricating oil composition. (Appeal Br. 5.) Appellant also argues the total calcium and magnesium (CaSulf/Ca+Mg ratio) in the lubricating oil composition from 0.06 to 0.35 is a result effective variable3 for reducing timing chain stretch in an engine. (Appeal Br. 5.) Appellant argues the present record contains evidence demonstrating that improving timing chain stretch is not an inherent property of Mosier’s genus of compositions. (Appeal Br. 5.) Appellant additionally argues the Examiner is relying impermissible hindsight in formulating an embodiment based on Mosier ¶ 60 that is not explicitly disclosed in the inventive examples. (Appeal Br. 10.) Appellant argues Application comparative example A, which does not contain magnesium, is 3 We note that Appellant asserts that the prior art does not recognize the CaSulf/Ca+Mg ratio as a result effective variable for reducing timing chain stretch in an engine. Appeal Br. 5. Instead, Appellant contends the present inventors found this ratio to be a result effective variable for reducing timing chain stretch. Id. For clarity purposes, our discussion of “result effective variable” is within the context of Appellant’s assertion with respect to identifying the CaSulf/Ca+Mg ratio as a result effective variable. Appeal 2021-001557 Application 15/613,696 5 the closest embodiment to Mosier because 11 of the 12 Inventive Examples in Mosier do not contain magnesium. (Appeal Br. 11.) Appellant further argues the working examples of the present application provide evidence that this range is result-effective for reducing timing chain stretch. (Appeal Br. 13.) We begin with an analysis of the preamble of the claimed method. There are numerous cases in which the preamble of a method claim which stated the purpose of the method was not sufficient to distinguish prior art which carried out the same steps of the method claim, albeit for a different purpose. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir. 2002); see also In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990); MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999); Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378- 79 (Fed. Cir. 2005); In re Omeprazole Patent Litig., 483 F.3d 1364, 1373 (Fed. Cir. 2007). While most of these cases were in the context of inherent anticipation, they stand for the principle that a claim preamble stating a purpose of a method, as in rejected claim 1, does not alone distinguish it from prior art. According to the Specification: In an internal combustion engine there may be a metal chain, also known as a timing chain, comprised of bearing pins, rollers, bushings, and an inner and outer plate. Due to the significant load and friction exerted on these components, the timing chain is susceptible to significant wear including corrosive wear. To address this problem lubricants are formulated to reduce wear between moving parts where there is metal to metal contact. Spec. ¶ 2. The Specification discloses several prior art documents have evaluated the effects of different lubricating compositions on engine timing Appeal 2021-001557 Application 15/613,696 6 chain wear in diesel and gasoline engines. Spec. ¶ 5–10. The Specification further states: The foregoing references do not provide an adequate solution for minimizing timing chain stretch in internal combustion engines. For example, the proposed use of dispersants for this purpose has been found to provide inadequate protection against timing chain stretch. Thus, the present disclosure provides a method of employing calcium detergents and detergent combinations in order to provide greater reductions in timing chain stretch than is provided by combinations of conventional anti-wear agents and/or dispersants. Spec. ¶ 11. While new uses of known processes may be patentable, newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent. Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc. 246 F.3d 1368, 1376-1377 (Fed. Cir. 2001) (citing In re May, 574 F.2d 1082, 1090 (CCPA 1978); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir. 1987)). Claims differing from a prior-art process by no more than the recitation of a result do not distinguish those claims over the prior art. Bristol-Myers Squibb, 246 F.3d at 1376–1377 (The prior art disclosed each and every step of the claimed process but admitted that the effectiveness of that process in treating cancer was unknown. The recitation of a result, efficacy in cancer patients, was found non-limiting and therefore did not distinguish the claims over the prior art.). Processes may be directed to the “same purpose” without achieving the same result. In re May, 574 F.2d at 1090 (A method for effecting non- addictive analgesia, and a method for effecting analgesia were both methods for effecting analgesia.); Bristol-Myers Squibb, 246 F.3d at 1376–1377 (A method including administering a drug and a method including Appeal 2021-001557 Application 15/613,696 7 administering an effective amount of that drug were both methods for treating cancer). The present record establishes the process of utilizing lubricating compositions in diesel and gasoline engines for lubrication of engine components and a method for reducing timing chain stretch of a timing chain in an engine comprising lubricating the timing chain with a lubricating oil composition are both methods of lubrication of engine components. Having determined the process of utilizing lubricating compositions in diesel and gasoline engines for lubrication of engine components was known to persons of ordinary skill in the art, we turn to the lubricating composition. The Examiner finds Mosier discloses a method of lubricating a spark- ignited internal combustion engine with a lubricating composition, as recited in claims 1 and 16, comprising an oil of lubricating viscosity and a metal overbased detergent. (Final Act. 2.) The Examiner finds the lubricating composition comprises the base oil and metal overbased detergent are present in concentration ranges that overlap the ranges recited in claim 1. (Final Act. 2; Mosier ¶¶ 95, 60.) The Examiner finds Mosier discloses the composition can comprise calcium and magnesium detergents in amounts wherein the ratio of calcium to magnesium ranges from 1:1 to 1:3. (Final Act. 2, 4; Mosier ¶ 60.) Mosier discloses the composition comprising calcium and magnesium detergents in amounts wherein the ratio of calcium to magnesium ranges from 1:1 to 1:3 as a separately distinct embodiment. (Mosier ¶ 60.) The Examiner finds Mosier discloses the detergents can be various types including phenates and sulfanates having TBN values within the ranges recited in amended claim 1. (Final Act. 2–4; Mosier ¶¶ 58, 59.) The Examiner finds Mosier does not explicitly disclose that the lubricating composition lubricates the timing chain. Citing to Esche, the Examiner finds Appeal 2021-001557 Application 15/613,696 8 the method of lubricating an internal combustion engine would intrinsically include lubricating the timing chain with the lubricating composition. (Final Act. 3; Esche ¶¶ 1–2.) Given that Mosier is also directed to lubricating internal combustion engines (Mosier ¶ 1), the Examiner determines that it would have been obvious to one of ordinary skill in the art to use Mosier’s lubricating composition to reduce the timing chain stretch to the extent recited in claim 1. (Final Act. 4.) The Examiner also determines that the claimed ranges of the calcium and magnesium detergent components for the lubricating oil composition are obvious because Mosier teaches ranges for calcium and magnesium detergents that overlap the claimed ranges. Cf. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003)): [A] prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. [Citations omitted.] Where the “claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap.” Thus, the Examiner’s determination that the selection of the combination of calcium and magnesium detergents in amounts wherein the ratio of calcium to magnesium ranges from 1:1 to 1:3 would flow naturally from the teachings of Mosier is reasonable. (Final Act. 2, 4; Mosier ¶ 60.) Stated differently, the fact that Appellant may have recognized another property (i.e., reducing timing chain stretch) which would flow naturally from following Mosier’s teaching of lubricating an internal combustion engine with a lubricating composition having a metal overbased detergent comprising the claimed constituents in the limits defined by the Appeal 2021-001557 Application 15/613,696 9 subject matter of independent claim 1 cannot be the basis for patentability when the differences, if any, would otherwise have been obvious. Cf. In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“Maloney’s express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”). Thus, Appellant’s arguments that the reproduction of Mosier’s example fails to render obvious the claimed invention are unavailing. A preponderance of the evidence supports the Examiner’s position that it would have been prima facie obvious to select the constituents in the limits defined by the subject matter of independent claim. Appellant relies on comparative example A of the Specification (argued as corresponding to Mosier) to establish that Mosier would lead the skilled artisan to conclude that Mosier’s method does not reduce timing chain stretch. (Appeal Br. 11; Spec. 23; see also Spec. 36 (Table 3)). When evidence of secondary considerations is relied on, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of prima facie obviousness was based, rather than evaluating it on its knockdown ability. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). We are unpersuaded by this evidence. It is well established that a reference is not limited to its examples or preferred embodiments; see Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious). As discussed above, Mosier teaches the constituents defined by the subject matter of independent claim is present in ranges that render the claimed range prima facie obvious. (Mosier ¶ 60.) The law is replete with cases in which the difference between Appeal 2021-001557 Application 15/613,696 10 the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See e.g., In re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). On this record, Appellant has not demonstrated reversible error in the Examiner’s determination that the evidence in the Specification is not persuasive of patentability of the subject matter of the claims for several reasons. (Ans. 11). The relied upon evidence is also insufficient to support Appellant’s assertion that the claimed range is a result-effective for reducing timing chain stretch. The evidence presented in the Specification does not evaluate comparative lubricating compositions comprising calcium and magnesium detergents within the range described by Mosier that are outside of the ranges required by the claimed invention. Further, Appellant’s reliance on a single comparative example is insufficient to determine if the variation in timing chain stretch achieved is due to the exclusion of magnesium detergent or the excessive amount of calcium that is present relative to the other examples. Thus, the evidence presented fails to support Appellant’s contention that the CaSulf/Ca+Mg ratio in the lubricating oil composition from 0.06 to 0.35 is a result effective variable for reducing timing chain stretch in an engine. Appeal 2021-001557 Application 15/613,696 11 To the extent that the reduction of the timing chain stretch resulting from the use of the inventive compositions may be an improvement over other prior art compositions, a mere improvement is not sufficient to establish that the results would have been “unexpected.” See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of “unexpected results” to be probative evidence of non-obviousness, the Applicant must establish that the difference between the results obtained through the claimed invention and those of the prior art would not have been expected by one skilled in the art at the time of invention). Appellant has not explained adequately why the exhibited reduction in timing chain stretch would have been recognized by a person skilled in the art to have been unexpected. Argument of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Cf. W.L. Gore & Assocs. v. International Med. Prosthetics Res. Assocs., 16 USPQ2d 1241, 1261 (D. Ariz. 1990) (Attorney argument that misled the examiner is not inequitable conduct, but would have been if made by affidavit.) Claims 7 and 15 Appellant initially argues that claims 7 and 15 are patentable over the cited prior art for the reasons presented for independent claim 1. Appellant argues claims 7 recites the lubricating composition comprises an oil soluble molybdenum complex and claim 15 recites that the lubricating oil composition further comprises a metal dialkyl dithiophosphate. (Appeal Br. 29–30.) To the extent that Appellant relies on the line of arguments presented for claim 1 to address claims 5 and 7, these arguments are not persuasive for Appeal 2021-001557 Application 15/613,696 12 the reasons set forth above. Appellant’s additional arguments for these claims are unpersuasive of reversible error because Appellant acknowledges that Mosier discloses various oil-soluble molybdenum compounds and metal dialkyl dithiophosphates are suitable for the lubricating compositions. (Appeal Br. 29–30.) SUPPLEMENTAL APPEAL BRIEF On July 1, 2021, Appellant submitted a Supplemental Appeal Brief for the purpose of citing new authority which became available after the appeal brief was filed. The submission presented was not limited to the purported new authority but also included arguments previously presented in the briefs of record. The filing of a Supplemental Appeal Brief usually occurs in very rare situations for the purpose of citing controlling authority such as decisions from our reviewing courts or precedential decisions of the Patent Trial and Appeal Board. In the present case, the cited purported new authority were ex parte decisions rendered by panels of the Patent Trial Appeal Board that are not precedential decisions and, therefore, not controlling. The presentation of decisions that are not controlling in a Supplemental Appeal Brief filing is tantamount to presenting new arguments that the Examiner did not have a fair opportunity to consider. Accordingly, we decline to address these arguments. CONCLUSION The Examiner’s prior art rejection is affirmed. Appeal 2021-001557 Application 15/613,696 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–9, 11, 12, 14–17, 19 103 Mosier, Esche 1–3, 6–9, 11, 12, 14–17, 19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation