2021000530 (P.T.A.B. Aug. 2, 2021)

Dow Global Technologies LLC

Patent Trials and Appeals BoardAug 2, 2021

2021000530 (P.T.A.B. Aug. 2, 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. 15/500,789 01/31/2017 Nadjet Khelidj 76686-US-PCT 8154 76104 7590 08/02/2021 The Dow Chemical Company/Brooks Cameron & Huebsch 1201 MARQUETTE AVENUE SOUTH, SUITE 400 Minneapolis, MN 55403 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 08/02/2021 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): DOW.DOCKETING@BIPL.NET PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NADJET KHELIDJ, MARTIN R. GREAVES, and EVELYN A. ZAUGG-HOOZEMANS Appeal 2021-000530 Application 15/500,789 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SMITH. Opinion Dissenting in part filed by Administrative Patent Judge REN. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8 and 10–16. An oral hearing was held on July 22, 2021.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 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 Dow Global Technologies LLC. Appeal Br. 2. 2 A written transcript of the Oral hearing will be entered into the record when the transcript is made available. Appeal 2021-000530 Application 15/500,789 2 STATEMENT OF THE CASE Appellant’s invention relates generally to base oil formulations comprising a base oil and an alkyl capped oil soluble polymer which are suitable for use as a lubricant in industrial applications. (Spec. 1.) Independent claim 1 is representative of the appealed subject matter and is reproduced below: 1. An industrial base oil formulation comprising a base oil having a kinematic viscosity of more than 100 centiStokes at 40 degrees Celsius and an alkyl capped oil soluble polymer additive being present in a range of five to twenty-five weight- percent based on the total combined weight of the alkyl capped oil soluble polymer additive and the base oil, where the alkyl capped oil soluble polymer additive consists of an alkyl capped oil soluble polymer additive having the structure of Formula I R1 [O(R2O)n ((R3O)m R4 ]p (I) where R1 is an alkyl having from one to thirty carbons, R2 and R3 are independently selected from alkyls having three or four carbons and can be in block form or randomly combined, R4 is an alkyl having from one to 18 carbon atoms, n and m are independently numbers ranging from zero to 20 provided that n+m is greater than zero and p is a number within a range of one to three, wherein the industrial base oil formulation has a kinematic viscosity of greater than 100 centiStokes at 40 degrees Celsius and a viscosity index of 130 or higher. Appeal Br. 16 (Claims Appendix). Appeal 2021-000530 Application 15/500,789 3 The following rejections are presented for our review: I. Claims 1–8 and 10–16 stand provisionally rejected on the ground of nonstatutory double patenting as unpatentable over claims 1 and 3–11 of copending Application No. 15/328,160. II. Claims 1–8 and 10–16 are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1–10 of U.S. Patent No. 9,926,510 (Greaves). III. Claims 1–8, 10–16 are rejected under 35 U.S.C. § 103 as unpatentable over Bush (US 2010/0004151 Al; pub. Jan. 7, 2010) in view of Zweifel (US 2014/0018273 Al; pub. Jan. 16, 2014). OPINION Rejections on the Ground of Nonstatutory Double Patenting The Examiner maintains the provisional rejection of claims 1–8 and 10–16 on the ground of nonstatutory double patenting as unpatentable over claims 1 and 3–11 of copending Application No. 15/328,160; and the rejection of claims 1–8 and 10–16 on the ground of nonstatutory double patenting as unpatentable over claims 1–10 of U.S. Patent No. 9,926,510. Ans. 3. Appellant has not identified any reversible error in the Examiner’s obviousness-type double patenting rejections. See generally Appeal and Reply Br. Therefore, we summarily affirm the Examiner’s obviousness-type double patenting rejections.3 3 Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Mar. 2014, Rev. November 2015) (“If a ground of rejection stated by the Appeal 2021-000530 Application 15/500,789 4 Prior Art Rejection After review of the respective positions Appellant and the Examiner provide, we determine that Appellant has demonstrated reversible error in the Examiner’s rejections under 35 U.S.C. § 103(a). We limit our discussion to independent claim 1. The Examiner finds Bush discloses hydrocarbyl-capped polyoxyalkylene glycol includes compounds derived from a copolymer of an alkylene oxide. (Final Act. 5.) The Examiner finds Bush does not specifically disclose a hydrocarbyl-capped polyoxyalkylene glycol made from only propylene oxide and butylene oxide as required by the claimed invention. (Final Act. 5.) The Examiner turns to Zweifel to address this difference. (Final Act. 5.) The Examiner specifically states: Zweifel discloses a lubricant composition comprising a polyalkylene glycol of formula (I): RO - (AO)n – R1 wherein R is C4 to C22 alkyl; AO is independently ethyleneoxy, propyleneoxy, butyleneoxy, or mixtures of two or more thereof; n is 8-16; and R1 is C1-C6 alkyl. In one embodiment, Zweifel discloses that any suitable ratio of different 1, 2-oxides may be employed, and that when a mixture of propylene oxide (PO) with either ethylene oxide (EO) or butylene oxide (BO) is utilized to form polyethers by random and/or block addition, the proportion of PO may be between 40 weight% and 60 weight% [0013]. Thus having the prior art references before the inventors at the time the invention was made it would have been obvious to have selected a hydrocarbyl-capped polyoxyalkylene glycol [E]xaminer is not addressed in the [A]ppellant’s brief, [A]ppellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the [E]xaminer subsequently withdrew the rejection in the [E]xaminer’s [A]nswer.”). See also 37 C.F.R. 41.39(a)(1). Appeal 2021-000530 Application 15/500,789 5 containing propylene oxide and butylene oxide as the alkylene oxides disclosed in Bush, as evidenced by [Zweifel], with a reasonable expectation of success. Since Bush teaches that various alkylene oxides and mixtures thereof may be used to prepare the hydrocarbyl-capped polyoxyalkylene glycol lubricating oil additive, including propylene oxide and butylene oxide, and [Zweifel] teaches polyalkylene glycols containing block or random copolymers containing propylene oxide and butylene oxide as effective lubricating oils, an “obvious to try” rationale exists, i.e., choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. A rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR, 82USPQ2d at 1397. (Final Act. 5–6.) Appellant argues the Examiner has failed to consider properly the limitations of the claims as a whole. (Appeal Br. 5.) Appellant specifically states: First, Appellant notes that the present claims (See e.g., claim 1) when properly examined as a whole require, “An industrial base oil formulation comprising a base oil having a kinematic viscosity of more than 100 centiStokes at 40 degrees Celsius and an alkyl capped oil soluble polymer additive being present in a range of five to twenty-five- weight-percent based on the total combined weight of the alkyl capped oil soluble polymer additive and the base oil, where the alkyl capped oil soluble polymer additive consists of an alkyl capped oil soluble polymer additive having the structure of Formula I: R1 [O(R2O)n (R3O)m R4 ]p (I) Appeal 2021-000530 Application 15/500,789 6 where R1 is an alkyl having from one to thirty carbons, R2 and R3 are independently selected from alkyls having three or four carbons and can be in block form or randomly combined, R4 is an alkyl having from one to 18 carbon atoms, n and m are independently numbers ranging from zero to 20 provided that n+m is greater than zero and p is a number within a range of one to three, wherein the industrial base oil formulation has a kinematic viscosity of greater than 100 centiStokes at 40 degrees Celsius and a viscosity index of 130 or higher”. (Appeal Br. 5–6.) In the Answer, the Examiner states: As set forth hereinabove, the examiner is of the position that Bush allows for any conventional base oil to be used as the base oil in the invention. Specifically, Group III base oils are defined as having a sulfur content of less than or equal to 0.03 wt.%, a saturate content of greater than 90 wt.%, and a viscosity index of greater than or equal to 120 [0130]. Bush discloses that the base oil of lubricating viscosity may be a Group III base oil [0130] which has a viscosity index of greater than 120. (Ans. 7.) During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also, Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’ Appeal 2021-000530 Application 15/500,789 7 refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis.”). Further, the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art the teachings of the invention in issue’”)). Appellant has persuasively argued that the Examiner has failed to properly articulate reasons for selecting a hydrocarbyl-capped polyoxyalkylene glycol that would result in a lubricant composition having a kinematic viscosity of greater than 100 centiStokes at 40 degrees Celsius and a viscosity index of 130 or higher as required by independent claim 1. The obvious to try rationale, as the Examiner provides in the Final Action, fails to account for all of the claim limitations. Thus, the Examiner fails to explain adequately how the formation of hydrocarbyl-capped polyoxyalkylene glycol containing block or random copolymers containing propylene oxide and butylene oxide, as described in Zweifel, would have resulted in lubricating oils that meet the viscosity requirements of the claimed invention. The additional rationale the Examiner provides in the Answer does not establish that the formation of hydrocarbyl-capped polyoxyalkylene glycol containing block or random copolymers containing propylene oxide and butylene oxide, as described in Zweifel, would have necessarily resulted in Bush’s Group III base oils having a viscosity index of 130 or higher as claimed. The Examiner’s added rationale appears to rely on cherry-picking specific embodiments from Bush (i.e. the Group III base oils) without adding additional analysis as to why the claimed hydrocarbyl- capped polyoxyalkylene glycol containing block or random copolymers Appeal 2021-000530 Application 15/500,789 8 containing propylene oxide would have been in the class of Group III base oils Bush describes. Absent adequate factual findings, the record indicates that the Examiner benefitted from impermissible hindsight in rejecting the claims. See In re Warner, 379 F.2d 1011, 1017 (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we do not sustain the § 103 rejection of claims 1–8, 10– 16 under 35 U.S.C. § 103(a) for the reasons Appellant presents and those we provide above. Because the affirmed rejections on the ground of nonstatutory obviousness reach all the claims presented for review on appeal, our decision is an affirmance. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 10–16 Provisional Nonstatutory Double Patenting 1–8, 10–16 1–8, 10–16 Nonstatutory Double Patenting 1–8, 10–16 1–8, 10–16 103 Bush, Zweifel 1–8, 10–16 Overall Outcome 1–8, 10–16 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). Appeal 2021-000530 Application 15/500,789 9 AFFIRMED Appeal 2021-000530 Application 15/500,789 10 REN, Administrative Patent Judge, dissenting in part. I respectfully dissent from the majority’s decision to reverse the Examiner’s obviousness rejection of claim 1. Appellant argues that Bush is “entirely silent with respect to a kinematic viscosity” and therefore does not teach or suggest the kinematic viscosity recited in claim 1. Appeal Br. 12. As the Examiner points out, however, the mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). The Specification provides that the recited “base oil can be a hydrocarbon base oil” and “[p]referably, the base oil is a polyalphaolefin.” Spec. 4:24–26. Appellant does not dispute the Examiner’s finding that “Bush discloses that the hydrocarbyl-capped polyoxyalkylene polyol may be mixed with . . . synthetic oils such as poly-alpha-olefin base oils.” Compare Appeal Br. 12, with Final Act. 5 (citing Bush ¶ 129). The Specification also provides that an industrial base oil having a kinematic viscosity of greater than 100 centiStokes at 40 degrees Celsius is known for “typical automotive applications.” Spec. 2:6–9. Appellant does not dispute the Examiner’s finding that “Bush discloses that the hydrocarbyl-capped polyoxyalkylene polyol may be mixed with a conventional oil of lubricating viscosity.” Compare Appeal Br. 12, with Final Act. 5 (citing Bush ¶ 122). Where, as here, “the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . [The] fairness [of the burden-shifting] is evidenced by Appeal 2021-000530 Application 15/500,789 11 the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant does not structurally distinguish the composition claim from the prior art, nor does Appellant present evidence showing that the recited properties are not present in the prior art composition. Appellant’s disagreement with the Examiner’s findings that identical compositions have identical properties (Appeal Br. 13) does not structurally distinguish the prior art and is unpersuasive of reversible error. Such “mere statements of disagreement . . . do not amount to a developed argument.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006). Neither Appellant nor the majority address the Examiner’s finding that properties such as viscosity recited in a composition does not distinguish the prior art. See Ans. 12 (citing In re Best, 562 F.2d 1252, 1254 (CCPA 1977)), Final Act. 10 (citing the same). The remaining arguments from Appellants are equally unpersuasive of a reversal. For example, Appellant argues that the Examiner erred because “the Final Office Action separated the claimed elements into overly simplified portions and then performed incremental examination of the same.” Appeal Br. 6. Appellant, however, does not specify which claim limitation, if any, is missing from the Examiner’s analysis. Appellant also does not dispute that the Examiner’s obviousness analysis gives effect to “every limitation positively recited in a claim.” See In re Wilder, 429 F.2d 447, 450 (CCPA 1970) (“[E]very limitation positively recited in a claim must be given effect in order to determine what subject matter that claim defines.”). Appellant also does not identify any violation of the Manual of Appeal 2021-000530 Application 15/500,789 12 Patent Examining Procedure, case law, or statute. See Appeal Br. 6. In my view, Appellant has not identified reversible error here. Appellant argues that the Examiner engaged in impermissible hindsight in the obviousness analysis. Id at 6, 13. Impermissible hindsight, however, occurs when a person of ordinary skill in the art is imbued with knowledge taught only by the inventor of the challenged patent. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). In my view, Appellant’s unelaborated statement does not identify any teaching that is “taught only by the inventor of the challenged patent” (see id. at 6, 13) and is therefore unsupported by evidence to show impermissible hindsight. Appellant next argues that “Bush appears to acknowledge its hydrocarbyl-capped polyoxyalkylene polyol is not soluble in a conventional oil of lubricating viscosity.” Appeal Br. 6. From the outset, I would have declined to consider as evidence such a perception of which Appellant is uncertain. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Moreover, Appellant does not dispute the Examiner’s finding that Bush teaches various examples of hydrocarbyl-capped polyoxyalkylene polyol mixed with conventional oil of lubricating viscosity. Compare Appeal Br. 6 (citing Bush ¶¶ 112, 131, example 1), with Final Act. 7 (citing Bush ¶¶ 66, 122, 124–131). As the Examiner points out, Bush states: “In instance where a conventional oil of lubricating viscosity may be immiscible with the hydrocarbyl-capped polyoxyalkylene polyol disclosed herein, a person skilled in the art may further include ester base oils.” Bush ¶ 122 (cited in Ans. 8). Bush’s teaching does not support Appellant’s broad assertion that no hydrocarbyl- Appeal 2021-000530 Application 15/500,789 13 capped polyoxyalkylene polyol is soluble in a conventional oil of lubricating viscosity. In any event, open-ended claim 1 does not limit solubility with or without adding ester base oils. Even if Appellant’s statement that “the hydrocarbyl-capped polyoxyalkylene polyol of Bush are insoluble in a conventional oil of lubricating viscosity, and instead required the presence of esters to achieve miscibility in conventional oil of lubricating viscosity” (Appeal Br. 6; see also Appeal Br. 11) were supported by evidence, the argument is unpersuasive as it is incommensurate in scope with the claim language.4 Appellant next argues that a skilled artisan would not have used the polyalkylene glycol of Zweifel as an additive because “[n]owhere does Zweifel not [sic.] teach or suggest using the PAG base oil itself as an additive.” Appeal Br. 7; see also Appeal Br. 12 (arguing that there is no suggestion or motivation to use “the polyalkylene glycols of Zweifel as additives in an oil-based lubricant, especially an oil based industrial lubricant”). In my view, Appellant’s argument is unpersuasive because it does not structurally distinguish the composition claim from the prior art. Moreover, I consider Appellant’s argument unpersuasive as it does not identify reversible error in the Examiner’s obviousness analysis which cites Zweifel for the teaching of “polyalkylene glycols containing block or random copolymers containing propylene oxide and butylene oxide as effective lubricating oils.” Compare id., with Final Act. 6. 4 Appellant additionally states that the amount of the polymer additive of example 1 Bush is higher than that recited. Appeal Br. 6. The statement, however, does not adequately explain why it identifies error in the Examiner’s findings or why it is relevant to the solubility of the additive. It is therefore unpersuasive in my view. Appeal 2021-000530 Application 15/500,789 14 Appellant next argues that “Bush’s polyols appear to require” a specific mixture of two compounds on of which is precluded by the claim language. Appeal Br. 8 (arguing that “the presence of alkylene oxide (2) appears required for Bush”). From the outset, I would have declined to consider as evidence such a perception of which Appellant is uncertain. “Attorneys’ argument is no substitute for evidence.” Johnston, 885 F.2d at 1581. Moreover, Appellant does not dispute the Examiner’s finding that Bush’s teachings are not limited to the example proffered by Appellant but instead “Bush additionally teaches in [0029] one embodiment where the hydrocarbyl-capped polyoxyalkylene polyol is obtained from an alkylene oxide including ethylene oxide, propylene oxide, butylene oxide, pentylene oxide, hexylene oxide, heptylene oxide, and others, and mixtures thereof.” Compare Appeal Br. 8, with Final Act. 7. No reversible error has been identified here in my view. Appellant’s argument that “any modification of Bush to omit alkylene oxide (2) from the mixture of Bush would destroy” the principle of operation of Bush (Appeal Br. 8–9) is also unpersuasive as explained supra – specifically that Appellant does not dispute the Examiner’s finding that Bush’s teachings are not limited to this particular embodiment. Appellant next argues that it would not have been to combine Bush and Zweifel because the Examiner’s “obvious to try” analysis lacks “a recognized problem or need in the art” as well as three other factors. Appeal Br. 10. The Examiner’s rationale to combine, however, is based on the finding that a skilled artisan “would deduce that various mixtures of the disclosed alkylene oxides are acceptable in preparing the hydrocarbylcapped polyoxyalkylene polyols suitable of use in industrial lubricant formulations” Appeal 2021-000530 Application 15/500,789 15 based on Bush’ teaching “that the hydrocarbyl-capped polyoxyalkylene polyol is obtained from an alkylene oxide including ethylene oxide, propylene oxide, butylene oxide, pentylene oxide, hexylene oxide, heptylene oxide, and others, and mixtures thereof.” Final Act. 8 (citing Bush ¶ 29); see also Final Act. 6. The Examiner’s rationale is also based on the finding that a skilled artisan would have a reasonable expectation of success by combining the finite number of prior art solutions because such combination would be a predicable variation of the prior art. Final Act. 6; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a predictable variation [of a known work], § 103 likely bars its patentability.”). With regard to Appellant’s argument that the obviousness analysis lacks a specific problem for which a skilled artisan would have combined the prior art teachings (Appeal Br. 10), I note that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” and that the Examiner in this case has provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Appellant’s arguments that “Bush does not contemplate Appellant’s present problem solved nor claimed solution thereto” (Appeal Br. 11) and that “Zweifel like Bush i does not address the problem solved by the presently claimed invention or the solution of the presently claimed invention” (id. at 12) are unpersuasive for the same reason. See KSR, 550 U.S. at 419–20. (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose Appeal 2021-000530 Application 15/500,789 16 of the patentee controls. . . . [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Appellant lastly argues that claims 10 and 11 “provide[] unexpected and surprising results that are neither taught nor suggested in any of the documents cited” but does not provide evidence in support. Appeal Br. 13. “Attorneys’ argument is no substitute for evidence.” Johnston, 885 F.2d at 1581. For this reason and reasons provided for claim 1 supra, I discern no reversible error has been identified with regard to the fact findings in support of the rejection of claims 10 and 11.