BASF SE

Patent Trials and Appeals Board

Feb 16, 2021

2020002770 (P.T.A.B. Feb. 16, 2021)

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.
15/554,038 08/28/2017 Markus SCHERER 074017-0036-US-566598 5442
123223 7590 02/16/2021
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
02/16/2021 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARKUS SCHERER
____________

Appeal 2020-002770
Application 15/554,038
Technology Center 1700
____________

Before TERRY J. OWENS, GEORGE C. BEST, and JANE E. INGLESE,
Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 14, 17–21, and 23–27.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies BASF SE as the real party in interest.
Appeal Brief filed September 12, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered February 1, 2019 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a lubricant composition. Appeal Br. 2–3. Claim 14,
the sole pending independent claim, illustrates the subject matter on appeal
and reads as follows:
14. A lubricant composition comprising
a) 9.0 to 94.0 wt% based on the total amount of
lubricant composition of a polyisobutene polymer
having a number average molecular weight of 300–
5000 g/mol according to DIN 55672 and at least 60
mol % terminal double bonds based on the total
number of double bonds in the polymer, and
b) 5 to 50 wt% based on the total amount of lubricant
composition of an ester component having kinematic
viscosity according to DIN 51562-1 in the range of 2
to 15 mm2/s at 100°C,
wherein the ratio of the polyisobutene polymer a) to the
ester component b) is from 1:2 to 12:1 based on the relative
weight of these components in the lubricant composition, and
wherein the lubricant composition further comprises 20
to 80 wt% of a base oil component comprising hydrogenated
polymers or oligomers of C8 to C16 alphaolefins, and
wherein the ester component is selected from the group
consisting of diisodecyladipate, diisotridecyladipate, di(2-
propylheptyl)adipate and trimethylolpropanolcaprylate.

Response to Notice of Non-Compliant Appeal Br. filed October 3,
2019, Appendix A, 3 (emphasis and indentations added).
REJECTION
The Examiner maintains the rejection of claims 14, 17–21, and 23–
273 under 35 U.S.C. § 103 as unpatentable over Waddoups et al. (US

3 Although the Examiner lists claims 14, 15, 19–21, and 23–26 in the
heading of this rejection, the Examiner addresses claims 14, 17–21, and 23–
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2006/0287202 Al, published December 21, 2006) in view of Ishida et al.
(US 5,543,081, issued August 6, 1996) in the Examiner’s Answer entered
December 27, 2019 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 14, 17–21, and 23–27 under 35 U.S.C. § 103 for reasons set forth in
the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
Appellant presents arguments directed to independent claim 14, and to
claim 18, which depends from claim 14. Appeal Br. 3–12. We, therefore,
address claim 18 separately, and select claim 14 as representative of the
remaining claims on appeal (claims 17, 19–21, and 23–27), which stand or
fall with claim 14. 37 C.F.R. § 41.37(c)(1)(iv).

27 in the body of the rejection. Final Act. 2–4. We, therefore, consider the
Examiner’s listing of claims 14, 15, 19–21, and 23–26 in the heading to be
an inadvertent typographical error.
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Claims 14, 17, 19–21, and 23–27
Claim 14 recites, in part, a lubricant composition comprising a
polyisobutene polymer, a diisodecyladipate ester having a kinematic
viscosity of 2 to 15 mm2/s at 100°C, and a base oil comprising hydrogenated
polymers or oligomers of C8 to C16 alphaolefins.
Waddoups discloses a lubricant composition useful as a two-cycle
(two stroke) oil. Waddoups ¶ 1. Appellant does not dispute the Examiner’s
finding that Waddoups discloses that the lubricant composition comprises a
polyisobutene polymer having the features recited in claim 14. Compare
Final Act. 2–3, with Appeal Br. 3–12; Waddoups ¶ 7. Waddoups discloses
that the lubricant composition also comprises a synthetic oil having a
viscosity of 4 to 15 mm2/s at 100ºC, and Waddoups indicates that suitable
synthetic oils include esters, such as diisodecyl azelate. Waddoups ¶¶ 10,
34, 35, 40. Appellant does not dispute the Examiner’s finding that
Waddoups’ synthetic oil constitutes a base oil. Compare Final Act. 2–3,
with Appeal Br. 3–12.
The Examiner finds that Waddoups does not disclose “the specific
ester” and a polyalphaolefin base oil as recited in claim 14, and the
Examiner relies on Ishida for suggesting inclusion of such an ester and base
oil in Waddoups’ lubricant composition. Final Act. 3–4.
Ishida discloses a lubricating oil composition useful for two stroke
engines that comprises a synthetic base oil. Ishida col. 3, ll. 13–24. Ishida
discloses that suitable synthetic base oils include diisodecyladipate, and also
include poly-α-olefin (polybutene, 1-octenoligomer, 1-decenoligomer),
which the Examiner finds correspond to the hydrogenated polymers or
oligomers of C8 to C16 alphaolefins recited in claim 14. Ishida col. 3, ll. 28–
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31; Final Act. 3. Ishida discloses that such synthetic base oils “may be used
alone or in combination.” Ishida col. 3, ll. 36–37.
In view of these disclosures in Ishida, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to use both a
diisodecyladipate and a poly-α-olefin oligomer as disclosed in Ishida as the
base oil of Waddoups’ lubricant composition, and to use these synthetic oils
in the viscosity range of 4 to 15 mm2/s at 100ºC taught by Waddoups. Final
Act. 3–4 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Appellant argues that “a person of skill in the art would [not] have
been motivated to pick the ester components of Ishida for combination with
Waddoups absent a technical reason to pick those specific ones.” Appeal
Br. 8–9. Appellant argues that the “Examiner’s reasoning for combining the
reference is not based on any factual evidence of record,” but, instead, “the
Examiner picked with hindsight selectively single features from Ishida.”
Appeal Br. 9–10.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection.
As discussed above, Waddoups and Ishida both disclose lubricant
compositions useful as two-stroke engine oils. It is undisputed on the record
before us that Waddoups discloses including a synthetic base oil in
Waddoups’ lubricant composition, and Waddoups indicates that suitable
synthetic oils include esters, such as diisodecyl azelate. Ishida’s disclosure
of using diisodecyladipate and poly-α-olefin(polybutene, 1-octenoligomer,
1-decenoligomer) in combination as the synthetic base oil component of a
lubricant composition useful as a two-stroke engine oil reasonably would
have suggested the suitability of using such synthetic base oils together as
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the base oil component of Waddoups’ lubricant composition. This is
particularly the case in view of the structural similarity between the
diisodecyl azelate ester disclosed in Waddoups and the diisodecyl adipate
ester disclosed in Ishida, and in view of Ishida’s explicit disclosure of the
suitability of using a combination of synthetic base oils. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.”)).
Ishida’s disclosure of numerous suitable synthetic base oils for
inclusion in a lubricating oil composition useful for two stroke engines does
not render any particular synthetic base oil, or combination of synthetic base
oils, any less obvious. Rather, Ishida would have suggested the suitability of
using any of the disclosed synthetic base oils and combinations thereof in a
lubricating oil composition, including a combination diisodecyladipate and
poly-α-olefin(polybutene, 1-octenoligomer, 1-decenoligomer). Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
’813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d
442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of
the prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
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Contrary to Appellant’s arguments, the Examiner’s rejection,
therefore, is not based on impermissible hindsight, but is based on explicit
disclosures in Waddoups and Ishida, and what those disclosures reasonably
would have suggested to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (C.C.P.A. 1976) (“[T]he question under 35 U.S.C. § 103 is
not merely what the references expressly teach, but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.”); In re Burckel, 592 F.2d 1175, 1179 (C.C.P.A. 1979) (under 35
U.S.C. § 103, a prior art reference “must be considered not only for what it
expressly teaches, but also for what it fairly suggests.”).
Appellant argues that the inventor found that the ratio range of
polyisobutene polymer to ester component recited in claim 14 “is the only
range that allows for maintenance of a suitably low pour point, high
oxidation stability, and a good seal compatibility,” as shown by data
presented in the Declaration of Dr. Jan Strittmatter filed December 3, 2018.
Appeal Br. 10–11. Appellant argues that “[t]his effect is in no way
suggested by any of the cited references, and is therefore unexpected.”
Appeal Br. 11.
The burden of establishing unexpected results rests with Appellant. In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”). To meet this burden,
Appellant must provide objective evidence—that is commensurate in scope
with the claimed subject matter—of results that would have been unexpected
by one of ordinary skill in the art relative to the closest prior art. In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
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the claimed range. Alternatively Harris needed to narrow the claims.”); In
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
‘it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.’” (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”).
On the record before us, Appellant does not meet this burden.
Appellant does not establish that the results obtained for the single inventive
lubricant composition set forth in the Strittmatter Declaration are
commensurate with the full scope of the lubricant compositions
encompassed by claim 14. The Strittmatter Declaration describes evaluating
the pour point, oxidation stability, and seal compatibility of an inventive
lubricant composition and two comparative lubricant compositions.
Strittmatter Decl. ¶¶ 4–8. The inventive lubricant composition discussed in
the Declaration included a single amount of each of one type of ester, one
type of base oil, and one type of polyisobutene polymer, while claim 14
broadly encompass wide-ranging amounts of numerous esters, base oils, and
polyisobutene polymers. Strittmatter Decl. ¶ 4 (Table A).
And although the Strittmatter Declaration does include results for two
comparative lubricant compositions, neither comparative composition
corresponds to a lubricant composition as disclosed in Waddoups. Id. The
experimental examples set forth in the Strittmatter Declaration, therefore, do
not provide (or allow) a comparison between the pour point, oxidation
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stability, and seal compatibility of lubricant compositions as recited in claim
14 and those of Waddoups, the closest prior art. The relied-upon
experimental examples, therefore, do not establish that lubricant
compositions as recited in claim 14 yield results that would have been
unexpected by one of ordinary skill in the art relative to Waddoups’
lubricant composition, the closest prior art.
Thus, considering the totality of the evidence relied upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner’s
conclusion of obviousness. In re Nolan, 553 F.2d 1261, 1267 (CCPA 1977)
(“Considering all of the evidence, we are not persuaded that the evidence of
the unexpected higher luminous efficiency and lower peak discharge current
rebuts the strong showing of obviousness.”). We, accordingly, sustain the
Examiner’s rejection of claims 14, 17, 19–21, and 23–27 under 35 U.S.C.
§ 103.
Claim 18
Claim 18 depends from claim 14 and recites that the base oil
component comprises a polyalphaolefin 6.
Appellant argues that “there is no specific teaching of
polyalphaolefin 6 in either Waddoups or Ishida.” Appeal Br. 12. Appellant
argues that the inventive and comparative lubricant compositions tested as
described in the Strittmatter Declaration used polyalphaolefin 6, establishing
unexpected results commensurate in scope with claim 18. Id.
As the Examiner finds, however, Appellant’s Specification defines
polyalphaolefin 6 (PAO 6) as “the class of polyalphaolefins which typically
has viscosity in the range of 6 mm2/s at 100ºC.” Final Act. 4; Ans. 8; Spec.
18, ll. 9–11. Appellant does not challenge the Examiner’s conclusion that it
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would have been obvious to one of ordinary skill in the art to use Ishida’s
diisodecyladipate and poly-α-olefin oligomer as the base oil of Waddoups’
lubricant composition “in the viscosity range [of 4 to 15 mm2/s at 100ºC]
taught by Waddoups,” which includes a viscosity of 6 mm2/s at 100ºC—the
viscosity of the poly-α-olefin oligomer polyalphaolefin 6 recited in claim 18
and suggested by Ishida. Compare Final Act. 4, with Appeal Br. 3–12.
Appellant’s argument that Waddoups and Ishida do not explicitly disclose
polyalphaolefin 6, therefore, does not identify reversible error in the
Examiner’s factual findings or conclusion of obviousness.
And although the base oil component of the lubricant composition of
claim 18 is limited to a base oil comprising polyalphaolefin 6, the results
obtained for the single inventive lubricant composition set forth in the
Strittmatter Declaration are not commensurate with the full scope of the
lubricant compositions encompassed by claim 18, for the reasons discussed
above. Nor do the experimental examples in the Strittmatter Declaration
establish that lubricant compositions as recited in claim 18 yield results that
would have been unexpected by one of ordinary skill in the art relative to
Waddoups’ lubricant composition, the closest prior art, for reasons also
discussed above.
We, accordingly, sustain the Examiner’s rejection of claim 18 under
35 U.S.C. § 103.
CONCLUSION
Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 17–21,
23–27
103 Waddoups, Ishida 14, 17–21,
23–27

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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