Ex parte Bloch et al.

Board of Patent Appeals and Interferences

Feb 11, 1999

08396501 (B.P.A.I. Feb. 11, 1999)

Application for patent filed March 7, 1995. According1
to appellants, this application is a continuation-in-part of
Application No. 08/234,090, filed April 28, 1994, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARDO A. BLOCH, ARUNAS T. LAPINAS,
EDWARD F. OUTTEN, ANDREW J.D. RITCHIE and MALCOLM WADDOUPS
________________
Appeal No. 97-3776
Application No. 08/396,5011
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-3776
Application No. 08/396,501
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This is an appeal from the final rejection of claims 1-
14, all the claims in the present application. Claim 1 is
illustrative:
1. A crankcase lubricant having a sulfated ash content
between 0.35 and 2 mass percent comprising a major amount of
an oil of lubricating viscosity to which the following
components have been added:
A) a nitrogenous TBN source selected from the group
consisting of ashless nitrogen containing dispersants, ashless
nitrogen containing dispersant viscosity modifiers, oil
soluble aliphatic, oxyalkyl, or arylalkyl amines and mixtures
thereof wherein said nitrogen containing dispersant is
selected from the group consisting of oil soluble salts,
amides, imides, amino-esters, and oxazolines of long chain
hydrocarbon substituted mono and dicarboxylic acids or their
anhydrides; long chain aliphatic hydrocarbons having a
polyamine attached directly thereto; and Mannich condensation
products formed by condensing a long chain substituted phenol
with formaldehyde and polyalkylene polyamine wherein the long
chain hydrocarbon has an MËš of 300 to 20,000;
B) a metal salt of an oil soluble acid having a TBN in
excess of 100;
C) a magnesium salt of an oil soluble organic acid in an
amount providing at least 500 ppm (mass) magnesium, and
D) at least one metal dihydrocarbyl dithiophosphate
wherein the nitrogenous TBN source provides at least about 1.5
TBN to the lubricant; the metal salt of an oil soluble acid
provides at least about 40% of the total TBN of the lubricant;
and at least 50 mole percent of the hydrocarbyl groups on the
metal dithiophosphate are secondary.
The examiner relies upon the following references as
evidence of obviousness:
Appeal No. 97-3776
Application No. 08/396,501
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Waddoups et al. (Waddoups) 4,938,880 Jul. 3, 1990
Fetterman, Jr. et al. (Fetterman) 5,102,566 Apr. 7, 1992
Appealed claims 1-14 stand rejected under 35 U.S.C. § 103
as being unpatentable over Fetterman in view of Waddoups.
Upon careful consideration of the opposing arguments
presented on appeal, we find that the examiner has failed to
establish a prima facie case of obviousness for the claimed
subject matter. Accordingly, we will not sustain the
examiner's rejection.
There is apparently no dispute that Fetterman discloses a
lubricant comprising the four components recited in the
appealed claims. However, the appealed claims specifically
require, inter alia, that "the nitrogenous TBN source provides
at least about 1.5 TBN to the lubricant" and that "the metal
salt of an oil soluble acid provides at least about 40% of the
total TBN of the lubricant." Appellants set forth at page 4
of the Brief that Examples 2 and 5 of the present
specification demonstrate the significance of the nitrogenous
TBN source providing at least about 1.5 TBN to the lubricant
and of the metal salt of an oil soluble acid providing at
least about 40% of the total TBN of the lubricant. It is
appellants' position that Fetterman, the primary reference,
Appeal No. 97-3776
Application No. 08/396,501
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does not teach these characteristics of the lubricant, or
their significance, and that Waddoups, the secondary
reference, does not cure these deficiencies. In addition,
appellants submit that the Waddoups declaration demonstrates
that a lubricant typical of the Fetterman lubricants do not
have a nitrogenous TBN contribution of at least about 1.5, and
that the lubricants typical of Fetterman do not pass all of
the tests required for the API CG-4 and API SH performance
certifications.
Although the examiner cites Fetterman for disclosing a
lubricant that comprises the four components of the claimed
lubricant, the examiner has failed to address the claim
limitations regarding the nitrogenous TBN source providing at
least about 1.5 TBN and the metal salt of an oil soluble acid
providing at least about 40% of the total TBN of the
lubricant. Consequently, the examiner has failed to establish
on this record that lubricants fairly within the Fetterman
disclosure inherently possess the claimed characteristics, or
that lubricants having the claimed characteristics would have
been obvious to one of ordinary skill in the art in view of
the collective teachings of Fetterman and Waddoups. As a
Appeal No. 97-3776
Application No. 08/396,501
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result, the examiner has not met her initial burden of setting
forth a prima facie case of obviousness for the claimed
subject matter. Also, the examiner's treatment of the
Waddoups declaration at page 6 of the Answer is inadequate.
The examiner provides no critical analysis of the declaration
in support of her conclusion that the declaration results are
"expected in the use of secondary zinc dihydrocarbyl
dithiophosphates over primary zinc dihydrocarbyl
dithiophosphates." We note that the lubricant offered for
comparison in the declaration, ECA 14751, comprises 34 mole
percent sec-hydrocarbyl groups.
In conclusion, based on the present record, we are
constrained to reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
Appeal No. 97-3776
Application No. 08/396,501
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CHUNG K. PAK )
Administrative Patent Judge )
clm
Appeal No. 97-3776
Application No. 08/396,501
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Exxon Chemical Co.
1900 E. Unden Ave.
P.O. Box 710
Linden, NJ 07036