Ex Parte Boffa

Board of Patent Appeals and Interferences

Jul 30, 2012

11435698 (B.P.A.I. Jul. 30, 2012)

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.
11/435,698 05/16/2006 Alexander B. Boffa T-5999C 6942
55741 7590 07/30/2012
M. CARMEN & ASSOCIATES, PLLC
1201 RXR Plaza
Uniondale, NY 11556
EXAMINER
VASISTH, VISHAL V
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
07/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXANDER B. BOFFA
____________

Appeal 2011-006848
Application 11/435,698
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1 and 3-10
directed to a lubricating oil composition for internal combustion engines.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. An internal combustion engine lubricating oil
composition comprising a major amount of an oil of lubricating
viscosity, at least one oil-soluble, phosphorous-containing, anti-
wear compound wherein the weight percent of total
phosphorous in the composition is no more than about 0.05
weight percent based on the total weight of the composition;
and from about 0.5 to 2 weight percent of a dispersed, hydrated,
alkali metal borate.

The Examiner relies upon the following as evidence of unpatentability
(Ans. 4):1
Shaub US 6,306,802 B1 Oct. 23, 2001
Nakazato US 2002/0019320 A1 Feb. 14, 2002
Ohsawa EP 1 057 883 A2 Dec. 6, 2000

The Appellant relies upon the following as evidence of patentability
(App. Br. 25):
FUELS AND LUBRICANTS HANDBOOK: TECHNOLOGY, PROPERTIES,
PERFORMANCE AND TESTING 440 (George E. Totten ed., ASTM International
2003).

THE REJECTIONS
The Appellant seeks review of the following rejections under
35 U.S.C. § 103(a): Claims 1 and 3-10 over Ohsawa; claims 1, 3, 4, and 6-
10 over Nakazato; and claims 1 and 3-10 over Nakazato in view of Shaub.
Ans. 4, 6, 7; App. Br. 3. The Appellant also seeks review of a rejection of

1 Our analysis makes reference to the Examiner’s Answer mailed January 4,
2011 (“Ans.”), the Appeal Brief filed October 5, 2010 (“App. Br.”), and the
Reply Brief filed March 7, 2011 (“Reply Br.”).
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claims 1 and 3-10 based on nonstatutory double patenting over claims 1-7 of
U.S. Patent No. 7,122,508 (“the ‘508 patent). Ans. 8; App. Br. 3.

ISSUES
The following dispositive issues arise:
1. Does the Examiner err in concluding that claim 1 would have
been obvious over Ohsawa?
2. Does the Examiner err in concluding that claim 1 would have
been obvious over Nakazato?
3. Does the Examiner err in rejecting the pending claims based on
nonstatutory double patenting over claims 1-7 of the ‘508 patent?
We answer the first question in the affirmative and REVERSE the
rejection of claims 1 and 3-10 over Ohsawa. We answer the second question
in the negative and AFFIRM the rejection of claims 1, 3, 4, and 6-10 over
Nakazato and AFFIRM the rejection of claims 1 and 3-10 over Nakazato in
view of Shaub. We answer the third question in the negative and AFFIRM
the rejection of claims 1 and 3-10 based on nonstatutory double patenting
over claims 1-7 of the ‘508 patent.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claim 1 is the only independent claim at issue. The Appellant argues
the rejected claims as a group, emphasizing the patentability of claim 1.
App. Br. 4. We select claim 1 as representative of the group. Claims 3-10
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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The Rejection Based On Ohsawa Is Reversed
The Examiner finds that Ohsawa discloses a lubricating oil
composition comprising a major amount of base oil, a zinc
dialkyldithiophosphate, an alkali metal borate or hydrate thereof, and an oil-
soluble phosphorus-containing extreme pressure agent. Ans. 4 (citing
Ohsawa ¶¶ [0014-0015]). The Examiner further finds that Ohsawa’s
composition contains a total phosphorus content of 0.011 to 2.0 weight
percent, which overlaps the range of “no more than about 0.05 weight
percent” that is specified in claim 1. Id. at 5. Regarding the concentration
of the metal borate, the Examiner finds that Ohsawa discloses a range of 0.6
to 15 weight percent, which overlaps the range of “from about 0.5 to
2 weight percent” that is specified in claim 1. Id. (citing Ohsawa, abstract,
¶ [0025]). In the Examiner’s view, moreover, Ohsawa’s composition “is
fully capable of reducing friction and wear in [] internal combustion
engines.” Id. at 5. On that basis, the Examiner concludes that the invention
of claim 1 would have been obvious over Ohsawa. Id. at 4.
The Appellant contends that Ohsawa is not analogous art because
Ohsawa’s field of endeavor is lubricants for gears whereas the relevant field
is lubricants for internal combustion engines. App. Br. 4. On this point, the
Appellant advances the correct and well established principle “that ‘[i]n
order to rely on a reference as a basis for rejection of an applicant’s
invention, the reference must either be in the field of the applicant’s
endeavor or, if not, then be reasonably pertinent to the particular problem
with which the inventor was concerned.’” App. Br. 7 (quoting In re Oetiker,
977 F.2d 1443, 1446 (Fed. Cir. 1992) (other citations omitted)).
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The Examiner makes a number of findings in response to the
Appellant’s nonanalogous art argument, none of which pertains to the
standard set forth in In re Oetiker. Ans. 9-10. Specifically, the Examiner
finds that Ohsawa’s gear lubricant “is fully capable of performing” as an
internal combustion engine lubricant, but fails to make the prerequisite
determination that Ohsawa qualifies as prior art. Id. at 9; see In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992) (“A prerequisite to making this finding
[regarding the scope and content of the prior art] is determining what is
‘prior art.’ . . . [T]his determination is frequently couched in terms of
whether the art is analogous or not, i.e., whether the art is ‘too remote to be
treated as prior art.”’) (quotation omitted); see also In re Bigio, 381 F.3d
1320, 1326 (Fed. Cir. 2004) (affirming PTO’s determination that “the
structural similarities between toothbrushes and small brushes for hair would
have led one of ordinary skill in the art working in the specific field of
hairbrushes to consider all similar brushes including toothbrushes”).
Critically absent here is any finding that even identifies what the
Examiner believes is the Appellant’s field of endeavor, let alone any reasons
in support of such a finding, or any findings tending to establish that Ohsawa
is within the Appellant’s field of endeavor or is reasonably pertinent to a
problem that the Appellant set out to solve. In re Oetiker, 977 F.2d at 1446.
Indeed, the Examiner appears to be taking the position that the Appellant’s
nonanalogous art argument does not apply because Ohsawa is not being
combined with another reference that teaches a different type of
composition. Ans. 9-10. That position is in error, for the test of
nonanalogous art determines whether, as a threshold matter, the applied
reference is properly used as prior art against the claims. Merely dismissing
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the Appellant’s argument by asserting that Ohsawa’s gear oil is fully capable
of functioning as an internal combustion engine oil, or that the “internal
combustion engine” limitation is merely an intended use, does not discharge
the Examiner’s obligation to analyze whether Ohsawa is analogous art. See
Reply Br. 4.
For the above reasons, we reverse the rejection of claims 1 and 3-10
as obvious over Ohsawa.

The Rejections Based On Nakazato Are Affirmed
The Examiner finds that Nakazato discloses an internal combustion
engine lubricant that comprises a major amount of a mineral base oil, zinc
dialkyldithiophosphate, and a hydrated alkali metal borate. Ans. 6 (citing
Nakazato, abstract, ¶ [0016]). The Examiner further finds that Nakazato
discloses a composition wherein the total concentration of phosphorus
ranges from 0.01 to 0.1 weight percent, which overlaps the range of “no
more than about 0.05 weight percent” recited in claim 1. Id. (citing
Nakazato, abstract). The Examiner also finds that Nakazato discloses a
composition wherein the concentration of the dispersed, hydrated alkali
metal borate ranges from 0.01 to 5.0 weight percent, which overlaps the
range of “from about 0.5 to 2 weight percent” recited in claim 1. Id. (citing
Nakazato ¶¶ [0051, 0053]). The Examiner concludes that the invention
would have been obvious over Nakazato. Id. at 6-8 (citing In re Wertheim,
541 F.2d 257 (CCPA 1976) (“where the claimed ranges ‘overlap or lie inside
ranges disclosed by the prior art’ a prima facie case of obviousness exists”).
On this record, we are of the opinion that the Examiner makes out a prima
facie case of obviousness of claim 1 over Nakazato.
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The Appellant contends that borate is “merely optional” in Nakazato,
therefore, the reference shows “no ‘recognition’ of the ‘result-effective’
capability of [borate] to maintain wear resistant properties of the oil in the
absence of higher concentrations of phosphorus.” App. Br. 15-16 (quotation
omitted). The Appellant also points out that “[o]nly one of ten examples
disclosed in Nakazato . . . even employs a hydrated alkali metal borate and it
is present in an amount of 0.3 weight percent, which is below the range of
about 0.5 to 2 weight percent” that is specified in claim 1. Id. at 15
(referring to Example 9 in Nakazato).
We are not persuaded that the facts raised by the Appellant overcome
the prima facie case of obviousness. Specifically, we agree with the
Examiner that “[t]he fact that an alkali metal borate is in an inventive
example means that at least one embodiment of Nakazato contemplates the
use of alkali metal borates.” Ans. 10. We further agree with the Examiner
that “[t]he ratio of the alkali metal borate component is not limited by the
example formulations and is given in a broader range which” overlaps the
range of claim 1. Id.; see Nakazato ¶¶ [0051, 0053] (disclosing “a hydrated
alkali metal borate in an amount of not more than 5 wt %, particularly, 0.01
to 5.0 wt. %”); cf. claim 1 (specifying borate range “from about 0.5 to 2
weight percent”).
Moreover, the Appellant’s contention regarding the result-effective
capability of borate misses the mark in the absence of evidence establishing
the criticality of the claimed range over the range disclosed in Nakazato. In
general, an applicant may overcome a prima facie case of obviousness by
establishing “that the [claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art
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range.” In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (citations
omitted). For the reasons stated below, we find that the Appellant fails to
come forward with persuasive argument or evidence establishing the
criticality of the claimed borate range over the range disclosed in Nakazato.
The Examiner finds, and we agree, that the Appellant’s data relates to
examples that contain additives that are not specified in claim 1, and
therefore, the data is not commensurate with the scope of claim 1. Ans. 11
(example oils contain “viscosity index improver, overbased detergents,
antifoam agents or other additives” that are not recited in claim 1). The
Examiner further finds, and we further agree, that the Appellant’s data does
not compare the composition of claim 1 to the closest prior art, namely, a
composition prepared according to the disclosure of Nakazato that comprises
“a hydrated alkali metal borate in an amount of not more than 5 wt %,
particularly, 0.01 to 5.0 wt. %.” Nakazato ¶¶ [0051, 0053]; see Ans. 6
(relying upon this disclosure in Nakazato in concluding that claim 1 would
have been obvious). No persuasive argument or evidence having been
brought forward by the Appellant, we affirm the rejection of claims 1, 3, 4,
and 6-10 as obvious over Nakazato.
The Appellant relies on the same arguments to establish error in the
Examiner’s conclusion that claims 1 and 3-10 would not have been obvious
over Nakazato in view of Shaub. App. Br. 21-22. For the reasons stated
above, we affirm the rejection of claims 1 and 3-10 as obvious over
Nakazato in view of Shaub.

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The Rejection Based On Nonstatutory Double Patenting Is Affirmed
Claims 1 and 3-10 stand rejected based on nonstatutory double
patenting over claims 1-7 of the ‘508 patent. Ans. 7-9. The Appellant states
that, “[u]pon resolution of all outstanding issues remaining in this
application, [the] Appellant will submit a Terminal Disclaimer to obviate the
provisional rejection.” App. Br. 22. Where the Appellant raises no
argument against the rejection, we affirm the rejection of claims 1 and 3-10
based on nonstatutory double patenting over claims 1-7 of the ‘508 patent.

CONCLUSION
We reverse the rejection of claims 1 and 3-10 as obvious over
Ohsawa. We affirm the rejection of claims 1, 3, 4 and 6-10 as obvious over
Nakazato. We affirm the rejection of claims 1 and 3-10 as obvious over
Nakazato in view of Shaub. We affirm the rejection of claims 1 and 3-10
based on nonstatutory double patenting over claims 1-7 of the ‘508 patent.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED
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