Ex Parte Boons et al

Patent Trial and Appeal Board

Aug 29, 2018

14102962 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/102,962 12/11/2013
14322 7590 09/07/2018
Michael E. Carmen, Esq.
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
FIRST NAMED INVENTOR
Cornelis Hendrikus Maria Boons
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
ATTORNEY DOCKET NO.
T-6531(538-107 CON
CON)
CONFIRMATION NO.
6675
EXAMINER
V ASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
09/07/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyoffice@rml-law.com
mec@rml-law.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIS HENDRIKUS MARIA BOONS,
MARCEL VERLINDE, and DIRK JAN ELZO VROLIJK
Appeal2017-010815
Application 14/102,962
Technology Center 1700
Before MICHAEL P. COLAIANNI, RAEL YNN P. GUEST,
and GEORGE C. BEST, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal, under 35 U.S.C. § 134(a), the Examiner's Final
Rejection of claims 1-3, 5, 8-11, 13-16, 18-24, and 29-33, which constitute
all the claims pending in this application. Claims 4, 6, 7, 12, 17, 25-28 have
been cancelled. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appellants' invention is directed to lubricant oil compositions suitable
for use in two-stroke diesel engines (Spec. ,r 1 ). According to the
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Application 14/102,962
Specification, these lubricant oil compositions may be used to lubricate the
power cylinders in diesel engines burning fuels having conventional or
reduced sulfur levels. Id.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative:
1. A lubricating oil composition comprising an
admixture of:
(a) a major amount of an oil of lubricating viscosity;
(b) a high-overbased calcium sulfonate detergent which
is the only high-overbased detergent;
( c) one or more foam inhibitors; and
( d) about 2 wt. % to about 25 wt. % of one or more non-
overbased or low overbased oil-soluble surfactant materials to
provide enhanced corrosive wear control, wherein the one or
more oil-soluble surfactant materials is either a non-overbased
sulfonate surfactant material or a low-overbased sulfonate
surfactant material;
wherein the lubricating oil composition is a marine cross-
head two-stroke diesel cylinder lubricating oil composition
having a total base number (TBN) of about 5 to about 100, and
further wherein the marine cross-head two-stroke diesel
cylinder lubricating oil composition does not include a phenol.
Appeal Br. 14 (Claims App'x) (emphasis added).
THE REJECTION
Appellants appeal the following rejection:
1. Claims 1-3, 5, 8-11, 13-16, 18-24, and 29-33 are rejected under
35 U.S.C. § I03(a) as unpatentable over Chambard et al. (US
2005/0153847 Al, published July 14, 2005, "Chambard '847") in
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view of Chambard et al. (US 2006/0116298 Al, published June 1,
2006, "Chambard '298").
Appellants' arguments focus on independent claims 1 and 22 (Appeal
Br. 5-12; Reply Br. 1-8). We select claim 1 as representative. 37 C.F.R.
§ 4I.37(c)(l)(iv). Accordingly, claims 2, 3, 5, 8-11, 13-16, 18-21, 23, 24,
and 29-33 will stand or fall with each of their respective independent claims.
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions are located on pages 3 to 7
of the Answer. We adopt the Examiner's findings and well-reasoned
conclusions as our own. We add the following analysis primarily for
emphasis.
According to the Examiner, Chambard '84 7 teaches a lubricating oil
composition comprising several detergents with varying degrees of
overbasing (Ans. 4).
We note that the Specification provides that a "low overbased
molecule has a TBN of above O but below about 60," whereas a "highly
overbased molecule has a TBN of about 60 to as high as above 500" (Spec.
if 26).
The Examiner finds, inter alia, that Chambard '84 7 discloses that one
of the detergents in a lubricating oil composition may be "at least 6 wt[.]%
of an additional calcium sulfonate detergent, which can be considered a
surfactant with a TBN of less than 50 ... meeting the limitations of
component (d) of claim I" (Ans. 4 (citing Chambard '847,I 28)).
The Examiner finds that Chambard '84 7 teaches all of the elements of
the lubricating oil composition recited in claim 1, with the exception that it
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"does not explicitly disclose a formulation having both a high overbased
calcium sulfonate detergent and a low-overbased sulfonate detergent as
required by claim 1" (Ans. 4 (emphasis added)).
The Examiner finds that Chambard '298 discloses a lubricating oil
composition, which, in the absence of phenol compounds, includes additives
of "up to 30wt % of a detergent such as a complex/hybrid detergent or an
overbased calcium sulfonate detergent having a TBN of at least 200 []as
recited in component (b) of claim 1" (Ans. 4 ( emphasis added)). The
Examiner concludes that it would have been obvious to "to use the
detergents of Chambard '298 in the composition of Chambard '847 as it is a
simple substitution of one known element for another in order to obtain
predictable results which include enhanced detergency properties" (Ans. 4--
5). According to the Examiner, Chambard '298 is specifically relied upon
"because of its disclosure of high overbased calcium sulfonate detergents[,]
which are shown to be equivalent in the compositions thereof as the complex
hybrid type detergents disclosed in Chambard '847." Id. at 5.
Appellants first contend that "the skilled artisan would not have
considered the calcium sulfonate detergents of Chambard [ ']298 to be
equivalents to the complex hybrid type detergents disclosed in Chambard
[']847" (Appeal Br. 7; see also Reply Br. 2). Appellants further contend that
Chambard '298's Example 1 shows that
when adding an oil-soluble or oil-dispersible molybdenum
compound to a lubricating oil composition containing a
phenate/sulfonate complex detergent such as the one disclosed
in Cham bard [ '] 84 7, better wear protection is achieved as
compared to the lubricating oil compositions of Comparative
Examples 1-3[,] which contain the phenate/sulfonate complex
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detergent and no oil-soluble or oil-dispersible molybdenum
compound.
Appeal Br. 10; see also Reply Br. 5. Thus, according to Appellants,
Chambard '298 "makes no showing that high overbased calcium sulfonate
detergents are equivalent to the complex hybrid type detergents disclosed in
Chambard [']847 in the compositions thereof' (Appeal Br. 10; see also
Reply Br. 5).
Appellants' arguments are not persuasive.
We agree with the Examiner that Chambard '298 discloses use of a
high-overbased calcium sulfonate or hybrid complex detergents as suitable
detergents in a lubricating oil composition (Chambard '298 ,r,r 78-81, 87
( disclosing "overbased ... metal sulfonates" in which "preferably the metal
is calcium" as a suitable detergent and the "hybrid complex detergent" as
"[a]lso suitable.")). We, furthermore, note that Chambard '847's
"complex/hybrid detergent" (Chambard '847 ,r 24) and Chambard '298's
"hybrid complex detergent" (Chambard '298 ,r 81) refer to the same
detergents. 1 Chambard '298, therefore, would have reasonably provided the
ordinary skilled artisan a teaching or suggestion that a high-overbased
calcium sulfonate detergent, which is the only high-overbased detergent,
may be added to a lubricating oil composition in the absence of Chambard
'847's "complex/hybrid detergent" (Chambard '847 ,r 24).
Thus, Appellants have not identified reversible error in the
Examiner's position that including the high-overbased calcium sulfonate
detergent of Chambard '298 in the complex hybrid type detergent disclosed
1 Both Chambard '847 (i-f 25) and Chambard '298 (i-f 81) refer to WO
97/46643, WO 97/46644, WO 97/46646, and WO 97/9746647 as providing
examples of hybrid complex detergents.
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in Chambard '84 7 would have been a simple substitution of one known
element for another in order to obtain predictable results, which include
enhanced detergency properties.
Appellants argue that Chambard '84 7 is distinguished because "the
primary goal of Chambard [']847 was to use more than 230 ppm zinc ...
together with the complex hybrid type detergents" in order to provide
increased wear protection (Appeal Br. 7; see also Reply Br. 2-3).
Appellants further argue that the examples of U.S. Patent No. 4,842,755
("the '755 patent"), as discussed in Chambard '847, establish that a high-
overbased calcium sulfonate detergent is not equivalent to a high-overbased
complex hybrid type detergent because the former provided less wear
protection than the latter when zinc amounts were increased to greater than
230 ppm (Appeal Br. 8; see also Reply Br. 3--4; 6-7). Based on this
discussion in Chambard '847 regarding the '755 patent, Appellants conclude
that if the high overbased calcium sulfonate detergent was used in the
Chambard '84 7 invention, "the lubricating oil composition disclosed therein
would not perform as Chambard [']847 intended" (Appeal Br. 9).
We, however, agree with the Examiner that Chambard '847's
discussion of the '755 patent is focused on varying the amount of zinc in the
composition (Ans. 6). Thus, Appellants' arguments fail because they are
directed to limitations not recited in claim 1, which is silent regarding the
presence of zinc. To the extent that Appellants are separately arguing the
patentability of dependent claims 29-32, which require that the lubricating
oil composition is free of zinc dithiophosphate, or zinc
dialkyldithiophosphate in particular, we are similarly unpersuaded. As the
Examiner found, Chambard '84 7 does not teach that these zinc-containing
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antiwear additives are the only such zinc-containing antiwear additives that
can be used in the compositions therein. Id.
Appellants argue that Chambard '84 7 must "necessarily include a
phenol" because "the complex hybrid type detergents include phenate
surfactant therein" (Appeal Br. 10-11). According to Appellants, Chambard
'84 7 has "has no appreciation that the marine diesel cylinder lubricant
disclosed therein excludes a phenol as Appellants' claim." Id. at 12.
Appellants' arguments are not persuasive because "[i]t is well settled
that a prior art reference is relevant for all that it teaches to those of ordinary
skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). In this
instance, Chambard '84 7 does not disclose that phenol compounds are
required in the described hybrid complex detergent. For example,
Chambard '847 expressly discloses that "[t]he detergent includes at least
two swfactants, preferably at least phenate and sulphonate" (Chambard '847
,r 24 ( emphasis added)). Chambard '84 7 further discloses that "the detergent
preferably also includes a salicylate surfactant" and "may also include other
surfactants such as ... an oil-soluble carboxylate." Id. Moreover,
Chambard '84 7 discloses that calcium is the preferred metal for the
surfactant. Id. Thus, we agree with the Examiner that Chambard '847
describes phenate as one option for a surfactant, but that sulfonate and
salicylate are also possible options, in which case there would be no
phenolic compounds in the hybrid complex detergent (see Ans. 7).
Even assuming that Chambard '84 7 requires a phenate surfactant in
the complex hybrid type detergent disclosed therein, Appellants' arguments
do not address the Examiner's proposed modification. As the Examiner
concluded, it would have been obvious to use Chambard '298's high
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Application 14/102,962
overbased calcium sulfonate detergent in Chambard '84 7 's lubricating oil
composition because it is a simple substitution of Chambard '298 's known
high overbased calcium sulfonate detergent for Chambard '84 7 's hybrid
complex detergent in order to obtain predictable results which include
enhanced detergency properties (Ans. 4--5). We note that Chambard '298
does not require phenate surfactants (Chambard '298 ,r,r 79, 80). Therefore,
the Examiner's proposed modification would have excluded any phenol
compounds even if such compounds were present in the substituted hybrid
complex detergent of Chambard '84 7.
Thus, based on this record, we sustain this rejection.
DECISION
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)(l )(iv).
ORDER
AFFIRMED
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