Ex Parte Bera et alDownload PDFPatent Trial and Appeal BoardDec 12, 201412028021 (P.T.A.B. Dec. 12, 2014) 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. 12/028,021 02/08/2008 Tushar Kanti Bera PF2008L003 5906 25553 7590 12/12/2014 INFINEUM USA L.P. P.O. BOX 710 LINDEN, NJ 07036 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 12/12/2014 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 TUSHAR KANTI BERA, JAMES CHRISTIAN DODD, JACOB EMERT, ALVARO RINCON-BARBADO, and JEREMY ROGER SPENCER ________________ Appeal 2013-001999 Application 12/028,021 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 14–24. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a trunk piston or cross-head diesel engine lubricating oil composition. Claim 14 is illustrative: 14. A trunk piston or cross-head diesel engine lubricating oil composition having a total base number of at least 15 mg KOH/g, as determined by ASTM D2896, comprising: App App (A) a (B) f oil o wher each subs hydr and c each bond each is se indep 10 w acyl each bear m is mass Bera Bera Cham 35 U eal 2013-0 lication 12 t least 40 rom 0.04 t f a combin (B1) at l ein: Ar indepe tituents se oxy, hydro ombinatio L is indep or a linki Y’ is inde lected from endently hen X is ( group, an a is indep s at least o 1 to 100, a (B2) at l : mass rat (Bera ’49 (Bera ’60 bard The clai .S.C. § 10 01999 /028,021 mass % of o 5 mass % ation of: east one li ndently re lected from xyalkyl, a ns thereof endently a ng group; pendently the group selected fr CR’2)z, an alkyl grou endently 0 ne group Y nd east one n io of (B1) 2) 3) ms stand r 3 over Ber an oil [of , express nked arom presents a the group cyloxy, ac ; linking m a moiety o consistin om H, C1 d 2 to 10 w p or an ary to 3, with ’ in which itrogen-co to (B2) is The US US EP The ejected as a ’492 in v 2 ] lubricatin ed as activ atic comp n aromatic consistin yloxyalky oiety com f the form g of (CR’2 to C6 alkyl hen X is O l group; the provis Z is not H ntaining di in the rang References 2006/018 7,485,603 1 528 099 Rejections follows: cl iew of Ch g viscosit e ingredie ound of th moiety ha g of alkyl, l, aryloxy, prising a c ula Z(O(C )z, O and and aryl; or S; y i o that at l ; and spersant, w e from 1:3 9492 A1 B2 A1 aims 14–2 ambard an y; and nt, of the l e formula: ving 0 to alkoxy, a aryloxy a arbon-car R2)n)yX-, S; R and R z is 1 to 1 s 1 to 30; Z east one A here the to 9:1. Aug. 24 Feb. 3, 2 May 4, 4 under d claims ubricating 3 lkoxyalkyl lkyl, halo bon single wherein X ’ are each 0; n is 0 to is H, an r moiety , 2006 009 2005 14–22 on , Appeal 2013-001999 Application 12/028,021 3 the ground of nonstatutory obviousness-type double patenting over claims 1–9 and 21–32 of Bera ’603. OPINION We affirm the rejections. Rejection under 35 U.S.C. § 103 The Appellants argue claims 14–24 as a group (Br. 4–6). We therefore limit our discussion to one claim, i.e., claim 14, which is the sole independent claim. Claims 15–24 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Bera ’492 discloses a diesel engine lubricating oil composition comprising a major amount of an oil of lubricating viscosity (¶ 26),1 about 0.005 to 15 mass %, more preferably about 0.5 to about 2 mass %, of a soot dispersant which is the Appellants’ linked aromatic compound (claim 14’s component B1) (¶¶ 19, 26),2 and a nitrogen-containing dispersant in an amount providing about 0.03 to about 0.15 mass %, preferably about 0.07 to about 0.12 mass %, of nitrogen (¶ 65).3 1 The Appellants, the first-named of whom is the first named inventor in the Bera ’492 application, define “major amount” as “in excess of 50 mass % of a composition” (Spec. 4:20). 2 The Appellants state that Bera ’492 describes their linked aromatic compound (Spec. 5:6–18) and acknowledge that “[t]here is no question that the commonly-assigned Bera et al. application describes the linked aromatic compounds of the present invention, and the use thereof in certain lubricating oil compositions” (Br. 5). 3 The Appellants’ ratio of claim 14’s component (B1) to (B2), expressed as the mass % of (B1), as active ingredient, to the mass % of nitrogen in (B2), preferably is 40:1 to 80:1 (Spec. 22:7–10). Appeal 2013-001999 Application 12/028,021 4 Chambard discloses a trunk piston diesel engine lubricating oil composition having a total base number (TBN) of more than 40 mg KOH/g, as determined by ASTM D2896 (¶ 57). The Appellants argue that Bera ’492’s soot dispersant is described therein as being useful only in crankcase lubricating oils, and because the rapid buildup of soot is not a problem associated with trunk piston engine lubricants, one of ordinary skill in the art would not have used Bera ’492’s soot dispersant in a trunk piston engine lubricating oil composition (Br. 5– 6). Bera ’492 states that using the soot dispersant in a crankcase lubricating oil composition is one aspect of the invention (¶ 10), but Bera ’492 also indicates that the soot dispersant is useful in lubricating oil compositions generally (¶¶ 8–9). Moreover, the Appellants’ argument is limited to rapid buildup of soot. The Appellants’ argument that “soot dispersing properties are not of paramount importance in marine diesel engine oils” (Br. 6) indicates that soot dispersion in trunk piston engine lubricants is of some importance. Bera ’492 discloses that both nitrogen-containing dispersants and Bera ’492’s soot dispersant disperse soot in lubricating oil compositions (¶¶ 3, 8, 65). Chambard discloses that nitrogen-containing dispersants disperse particles in a trunk piston diesel engine lubricating oil composition to improve engine cleanliness (¶¶ 65–67). Those disclosures would have led one of ordinary skill in the art, through no more than ordinary creativity, to combine Bera ’492’s soot dispersant with a nitrogen-containing dispersant in a trunk piston diesel engine lubricating oil composition to further improve engine cleanliness. See KSR Int’l Co. v. Appeal 2013-001999 Application 12/028,021 5 Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellants argue that “crankcase lubricants for heavy duty diesel engines are ash constrained and, as noted in the Bera et al. application (paragraph 0114), such lubricants preferably have a sulfated ash content of 1.0 mass% or less” (Br. 5) and “as the main contributor of TBN in a lubricant is an overbased metal-containing detergent, ash constrained lubricant compositions do not conventionally have a TBN of at least 15 or 20 mg KOH/g.” Id. Bera ’492 discloses that overbased calcium-containing detergents having a TBN of 20 to 450 mg KOH/g are useful in the lubricating oil composition for reducing or removing deposits (¶¶ 67–68). Chambard discloses that overbased calcium-containing detergents which are useful for reducing deposit formation in a trunk piston diesel lubricating oil composition include those having a TBN of 50-500 mg KOH/g (¶¶ 16–19). Because, as pointed out above, Bera ’492 indicates that the soot dispersant is useful in lubricating oil compositions generally and, as acknowledged by the Appellants, overbased metal-containing detergents are the main contributor of TBN in a lubricant (Br. 5), those references would have led one of ordinary skill in the art, through no more than ordinary creativity, to use a sufficient amount of Bera ’492’s overbased calcium-containing detergents within Chambard’s TBN range to give Bera ’492’s lubricating oil composition a TBN which renders it suitable for use as a trunk piston diesel lubricating oil composition. See KSR, 550 U.S. at 418. Appeal 2013-001999 Application 12/028,021 6 The Appellants argue that “[s]urprisingly, appellants have found that adding a minor amount of the aforementioned linked aromatic compound to the lubricating oil composition improves the water-shedding properties of the lubricants” (Br. 5). That argument is unpersuasive as lacking evidence that the observed improvement was surprising. Mere arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, to establish a prima facie case of obviousness, references need not be combined for the purpose of solving the problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). As pointed out above, combining Bera ’492’s and Chambard’s disclosures would have been prima facie obvious to one of ordinary skill in the art for the purpose of rendering Bera ’492’s lubricating oil composition suitable for use as a trunk piston diesel lubricating oil composition. Accordingly, we are not persuaded of reversible error in the rejection under 35 U.S.C. § 103. Obviousness-type double patenting rejection Regarding the obviousness-type double patenting rejection the Appellants rely only upon their arguments set forth with respect to the rejection under 35 U.S.C. § 103 (Br. 6). Those arguments are not convincing of reversible error for the reasons given above. Appeal 2013-001999 Application 12/028,021 7 DECISION/ORDER The rejections of claims 14–24 under 35 U.S.C. § 103 over Bera ’492 in view of Chambard and claims 14–22 on the ground of nonstatutory obviousness-type double patenting over claims 1–9 and 21–32 of Bera ’603 are affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc Copy with citationCopy as parenthetical citation