BASF SEDownload PDFPatent Trials and Appeals BoardFeb 16, 20212020002770 (P.T.A.B. Feb. 16, 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. 15/554,038 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.”). Appeal 2020-002770 Application 15/554,038 2 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– Appeal 2020-002770 Application 15/554,038 3 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. Appeal 2020-002770 Application 15/554,038 4 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– Appeal 2020-002770 Application 15/554,038 5 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 Appeal 2020-002770 Application 15/554,038 6 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”). Appeal 2020-002770 Application 15/554,038 7 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 Appeal 2020-002770 Application 15/554,038 8 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 Appeal 2020-002770 Application 15/554,038 9 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 Appeal 2020-002770 Application 15/554,038 10 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 Appeal 2020-002770 Application 15/554,038 11 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 Copy with citationCopy as parenthetical citation