11850730 (P.T.A.B. Sep. 26, 2013)

Ex Parte Arrowsmith et al

Patent Trial and Appeal BoardSep 26, 2013

11850730 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/850,730 09/06/2007 Stephen Arrowsmith PF2006M011 8046 25553 7590 09/27/2013 INFINEUM USA L.P. P.O. BOX 710 LINDEN, NJ 07036 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 09/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN ARROWSMITH, LAURA KOSIDOWSKI, JEREMY R. SPENCER, and PETER D. WATTS ____________ Appeal 2012-009060 Application 11/850,730 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and ROMULO H. DELMENDO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claim 1 is illustrative: 1. A lubricating oil composition including at least one sulphurized overbased metal phenate detergent prepared from a C9-C15 alkyl phenol, at least one sulphurizing agent, at least one metal and at least one overbasing agent; the detergent including less than 6.0% by combined mass of unsulphurized C9-C15 alkyl phenol and unsulphurized metal salts thereof. Appeal 2012-009060 Application 11/850,730 2 The Examiner relies upon the following references as evidence of obviousness: Hakala et al. (Hakala) US 2,880,175 Mar. 31, 1959 Marsh et al. (Marsh) RE 35,461 Feb. 25, 1997 Liston US 5,024,773 Jun. 18, 1991 Gomes et al. (Gomes) US 6,034,039 Mar. 7, 2000 Stonebraker et al. (Stonebraker) US 7,435,709 B2 Oct. 14, 2008 Alexander et al. (Alexander) WO 2004/053030 A2 Jun. 24, 2004 Appellants' claimed invention is directed to a lubricating oil composition comprising a sulphurized overbased metal phenate detergent. The detergent is prepared from a C9-C15 alkylphenol, a sulphurizing agent, a metal, and an overbasing agent. The detergent includes less than 6.0 % by combined mass of unsulphurized C9-C15 alkylphenol and unsulphurized metal salts thereof. The appealed claims stand rejected under 35 U.S.C. Â§ 103(a) as follows: (a) claims 1-3, 5, 6, 9, and 10 over Liston in view of Hakala and Stonebraker, (b) claims 1-3, 6, 9, and 10 over Alexander, (c) claim 4 over Liston in view of Hakala, Stonebraker, Alexander, and Marsh, and (d) claims 7 and 8 over Liston in view of Hakala, Stonebraker, Alexander, and Gomes. Appellants do not present, substantive arguments for any particular claim on appeal. Accordingly, all the appealed claims stand or fall together with the Examiner's rejections of claim 1. Appeal 2012-009060 Application 11/850,730 3 We have thoroughly reviewed each of Appellants' arguments for patentability, as well as the Specification data relied upon in support thereof. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of Â§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejections for the reasons set forth in the Answer, and we add the following for emphasis only. We consider first the rejection of claim 1 over Liston in view of Hakala and Stonebraker. There is no dispute that Liston, like Appellants, discloses a detergent for a lubricating oil composition comprising a metal overbased sulphurized alkylphenol. Liston does not expressly teach that the detergent includes less than 6.0% by combined mass of the unsulphurized alkylphenol and unsulphurized metal salts thereof. The principal argument advanced by Appellants is that "[t]he patent fails to disclose anything about the minimal levels of unsulphurized alkylphenol that can be obtained in such a reaction, or steps that may be taken to minimize the formation of such by- products to the extent necessary to provide a detergent product having the low unsulphurized alkylphenol content required by the present claims" (Br. 4, last para.). Like the Examiner, we are not persuaded by Appellants' argument. Liston specifically teaches that, since only the Group II metal sulphurized alkylphenol is capable of being overbased, it is desirable to minimize the amount of Group II metal unsulphurized alkylphenol in a reaction process. (Liston, para. bridging cols. 3-4). Also, Liston specifically discloses that the product preferably comprises at most 5 mole percent of the unsulphurized Appeal 2012-009060 Application 11/850,730 4 Group II metal alkylphenols (col. 5, ll. 17-18). Accordingly, the reference clearly teaches that to achieve the desired advantages of a sulphurized alkylphenol additive, such as higher TBN products, improved hydrolytic stability, lower viscosity, and less crude sediment, one of ordinary skill in the art should minimize the amount of the unsulphurized alkylphenol in the additive, optimally zero percent. Consequently, we find that the Examiner's legal conclusion that it would have been obvious for one of ordinary skill in the art to formulate a detergent comprising less than 6.0 percent of the unsulphurized alkylphenol is free of reversible error. While Appellants submit that "the level of unsulphurized alkylphenol and unsulphurized alkylphenol metal salt in an overbased sulphurized metal phenate detergent is dependent on process conditions, as well as starting reactants" (Br. 6, last para.), Appellants have pointed to no particular process conditions or starting reactants that are different than those fairly taught by Liston, or which would have been nonobvious to one of ordinary skill in the art. Also, as set forth by the Examiner, Hakala and Stonebraker give additional advantages for including unsulphurized alkylphenols in amounts less than 6.0 percent. We now turn to the Â§ 103 rejection of claim 1 over Alexander. Alexander also discloses an additive for a lubricant composition comprising a sulphurized overbased metal phenate detergent prepared from a C1-C30 alkylphenol, which encompasses the claimed C9-C15 alkylphenol. Alexander does not disclose the amount of unsulphurized alkylphenol in the detergent. However, since Appellants' detergent has a TBN of 258 (see TABLE on Appeal 2012-009060 Application 11/850,730 5 page 36 of Specification), and the detergent of Alexander has a TBN in the range of 250-450 (para. 105), it is the Examiner's position that it would be reasonable to conclude that the detergent of Alexander comprises unsulphurized alkylphenols within the claimed range. We note that Appellants have not addressed, let alone rebutted, the Examiner's position. Appellants further submit that "the data of the present specification demonstrates the improved acid neutralization rate achieved with the lubricating oil compositions by direct comparison with a lubricating oil composition containing an overbased sulphurized metal phenate product having only slightly greater than 6.0 mass % (6.15%) of unsulphurized alkylphenol (and metal salt), which product (OLOA 219) is a commercial product of an affiliated division of the assignee of the Liston patent (and the Stonebraker et al. patent)" (Br. 5, last para.). However, we agree with the Examiner that the single sulphurized overbased metal phenate detergent exemplified in two different amounts (Example A and Example B) is hardly commensurate in scope with the degree of protection sought by the appealed claims, which embrace a myriad of conventional sulphurized overbased metal phenates in any amounts with any amount of sulphurizing agent, a variety of metals and overbasing agents. Furthermore, since Liston specifically teaches minimizing the formation of the unsulphurized alkylphenols to achieve the benefits associated with the sulphurized alkylphenol, Appellants have not shouldered their burden of demonstrating that the limited comparative data would be considered truly unexpected by one of ordinary skill in the art. In addition, Appellants have not established a meaningful side-by-side comparison with Appeal 2012-009060 Application 11/850,730 6 the detergents fairly disclosed by Liston, and their method of preparation. As such, Appellants have not presented a comparison with the closest prior art. In conclusion, based on the foregoing and the reasons well stated by the Examiner, it is our judgment that the Examiner's evidence of obviousness outweighs Appellants' evidence of nonobviousness. Consequently, the Examiner's decision rejecting the appealed claims is affirmed. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED cam