Ex Parte Anderson et al

Board of Patent Appeals and Interferences

Apr 26, 2012

11774312 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY P. ANDERSON and DAVID J. DEGONIA
____________

Appeal 2011-002075
Application 11/774,312
Technology Center 1700
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Before CHUNG K. PAK, HUBERT C. LORIN, and JEFFREY T. SMITH,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002075
Application 11/774,312

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6.
According to the Specification, page 1, Appellants’ invention relates
to a lubricant system comprising an engine oil composition, a transmission
fluid composition, and a gear oil composition; a kit comprising the disclosed
compositions; and a method of improving fuel economy of a vehicle.
Claims 1, 16, and 21 are illustrative:
1. A lubricant system comprising:
an engine oil comprising at least one additive chosen
from a viscosity index improver, a dispersant, a detergent, an
antioxidant, and an antiwear compound;
a transmission fluid comprising at least one additive
chosen from a dispersant and a pour-point depressant; and
a gear oil comprising at least one additive chosen from a
viscosity index improver, an extreme pressure agent, and a
dispersant,
wherein the engine oil, the transmission fluid, and the
gear oil are separate oils.

16. A method of improving fuel economy of a vehicle
comprising:
providing to the vehicle a lubricant system comprising:
an engine oil comprising at least one additive chosen
from a viscosity index improver, a dispersant, a detergent, an
antioxidant, and an antiwear compound;
a transmission fluid comprising at least one additive
chosen from a dispersant and a pour-point depressant; and
a gear oil comprising at least one additive chosen from a
viscosity index improver, an extreme pressure agent, and a
dispersant,
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wherein the engine oil, the transmission fluid, and the
gear oil are separate oils.

21. A multi-component kit comprising:
a first component comprising an engine oil comprising at
least one additive chosen from a viscosity index improver, a
dispersant, a detergent, an antioxidant, and an antiwear
compound;
a second component comprising a transmission fluid
comprising at least one additive chosen from a dispersant and a
pour-point depressant; and
a third component comprising a gear oil comprising at
least one additive chosen from a viscosity index improver, an
extreme pressure agent, and a dispersant,
wherein the engine oil, the transmission fluid, and the
gear oil are separate oils.

Appellants request review of the following rejections from the
Examiner’s Final Office action (App. Br. 3):
I. Claims 1-8, 10-13, and 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Bouffet, U.S. 5,736,490, issued April 7,
1998.
II. Claims 9, 14 and 20-24 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bouffet, Ryan, U.S.
6,255,263, issued July 3, 2001, and Hurner, U.S. 4,522,167,
issued June 11, 1985.

Appeal 2011-002075
Application 11/774,312

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OPINION1
The dispositive issues for claims 1, 16, and 21 are as follows:
Did the Examiner err in determining that Bouffet would have
suggested to a person of ordinary skill in the art a vehicle lubricant system as
described by the subject matter of independent claim 1?
Did the Examiner err in determining that Bouffet would have
suggested to a person of ordinary skill in the art a method of improving fuel
economy comprising providing a vehicle lubricating system to a vehicle as
required by the subject matter of independent claim 16?
Did the Examiner err in determining that the combination of Bouffet,
Ryan, and Hurner would have suggested to a person of ordinary skill in the
art a multi-component kit as described by the subject matter of independent
claim 21?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
The Examiner found that Bouffet describes an automotive lubricant
oil composition suitable for engines, transmission, and gear boxes. (Ans. 3-
4). The Examiner also found that Bouffet describes a method of lubricating
an automotive engine, transmission, and gear boxes comprising providing
the respective lubricant oil compositions including the inventive basestock to
the appropriate automotive equipment. (Id. at 5). Bouffet specifically

1 Appellants have not presented separate substantive arguments addressing
the claims 1-8, 10-13, 15-19 and 22-24. Appellants also contend that the
subject matter of separately rejected claims 9, 14, and 20 are patentable for
the same reasons as independent claims 1 and 16. (App. Br. 16).
Consequently, we will limit our consideration to independent claims 1, 16,
and 21.
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discloses a lubricant basestock that is useful in lubricating engine oil, gear
oil and automatic transmission fluid. (Col. 1, ll. 3-6, and 41-47). Bouffet
also discloses the automotive lubricants of the invention which comprise the
basestock including an antioxidant polyisoalkylene compound and have the
benefit of increased efficacious operation times when utilized in automotive
mechanical devices, such as an internal combustion engine or gear box or
automotive transmission. (Col. 1, ll. 50-60).

Claims 1 and 16
Regarding the rejection of claim 1, Appellants argue that
Bouffet teaches [to] a single composition that can be used
alternatively as an engine oil, a gearbox lubricant composition,
or an automatic transmission composition. However, Bouffet
does not teach or suggest a lubricant system (which is not a
composition, but is instead a system), which comprises three
separate oils, as presently claimed.

(App. Br. 11-12).
Appellants also argue that “[i]f Bouffet were teaching or suggesting
the claimed lubricant system, one would expect the Examples to illustrate
lubricant systems comprising three separate oil compositions.” (Id. at 11).
Regarding the rejection of claim 16, in addition to the arguments
presented in the above, Appellants argue that the expression of the problem
of improving fuel economy of the vehicle cannot be ignored. (Id. at 15).
As set forth above Appellants contend that the subject matter of claim
1 is directed to a lubricant system which comprises three separate oils. In
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light of Appellants’ argument, we interpret the claimed subject matter as a
collection that comprises three separate oil compositions.2
Appellants’ arguments in response to the rejection are not persuasive
of a patentable distinction over the disclosure of Bouffet. As recognized by
the Examiner (Ans. 3-4) Bouffet discloses a lubricant basestock composition
that is combined with lubricants utilized in three areas of an automotive
device, that is, the engine, the gear box, and the automatic transmission.
(Col. 1, ll. 3-6, and 41-47). Thus, Bouffet is suggestive to a person of
ordinary skill in the art of three lubricant compositions: engine oil
comprising the lubricant basestock composition; gear oil comprising the
lubricant basestock composition; and automatic transmission fluid
comprising the lubricant basestock composition. A person of ordinary skill
in the art would have sufficient skill to create a collection of engine oil, gear
oil, and transmission fluid each of which comprises the lubricant basestock
disclosed in Bouffet. For the forgoing reasons, we affirm the rejection of the
subject matter of claim 1.
The collection of the three lubricant compositions, when utilized in
the respective automotive mechanical devices, would have provided the
benefit of increased efficacious operation. Consequently, a person of
ordinary skill in the art would have found it obvious to perform the method
of utilizing the collection of the three lubricant compositions in the

2 The claim could be interpreted as a collection of compositions of matter
and a process of using the compositions or, in the words of 35 U.S.C. §
101, they are directed to the combination of a “useful process” and a
“composition of matter,” entities which exist in two different statutory
classes of invention. See 35 U.S.C. § 101 (2010). Should the claims be
subjected to further prosecution, the Examiner should consider whether
rejections under 35 U.S.C. § 101 and/or 35 U.S.C. § 112, ¶ 2 are appropriate.
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respective automotive mechanical devices to obtain the benefit of increased
efficacious operation (i.e., increased fuel economy). For the forgoing
reasons, we affirm the rejection of the subject matter of claim 16.

Claim 21
Appellants argue that Bouffet, Ryan, and Hurner considered
individually or in combination fail to teach or suggest each and every
element of independent claim 21. (App. Br. 16-17).
We determine that the subject matter of claim independent 21 would
have been obvious over Bouffet for the reasons set forth above. As set forth
above, Bouffet is suggestive to a person of ordinary skill in the art of a
collection of three lubricant compositions: engine oil comprising the
lubricant basestock composition; gear oil comprising the lubricant basestock
composition; and automatic transmission fluid comprising the lubricant
basestock composition. The individual lubricant compositions are
equivalent to the components contained in the kit described by the subject
matter of claim 21.
For the foregoing reasons, we affirm the rejection of the subject
matter of independent claims 1, 16, and 21.

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

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