Ex Parte Buck et al

Patent Trial and Appeal Board

Dec 15, 2014

11731880 (P.T.A.B. Dec. 15, 2014)

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.
11/731,880 03/30/2007 William H. Buck GPK-0708 8887
7590 12/15/2014
ExxonMobil Research and Engineering Company
P.O. Box 900
Annandale, NJ 08801-0900
EXAMINER
WEISS, PAMELA HL
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
12/15/2014 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 WILLIAM H. BUCK,
L. OSCAR FARNG, DOUGLAS E. DECKMAN,
STEVEN KENNEDY, and ANDREW G. HORODYSKY
____________

Appeal 2013-001849
Application 11/731,880
Technology Center 1700
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–4, 7, 8, 10, 12, and 13. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method for improving the wear and oxidation
resistance of a lubricating oil composition by adding performance additives
including an organic boron containing additive (e.g., borated glycerol mono-
oleate) and a non-corrosive ashless sulfur additive (e.g., dithiocarbamate)
(sole independent claim 1).

Appeal 2013-001849
Application 11/731,880

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A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method for improving the wear and oxidation
resistance of a lubricating oil composition comprising adding to
an engine a lubricating oil base stock selected from the group
consisting of alkylated aromatics, Group II, Group III, Group
IV and gas-to-liquids base stock and one or more performance
additives by employing as the performance additives at least
one organic boron containing additive selected from the group
consisting of borated glycerol mon[o]-oleate, borated glycerol
di-oleate, borated glycerol tri-oleate, borated glycerol mono-
cocoate, borated glycerol mono-talloate, borated glycerol
mono-sorbate, borated polyol esters and mixtures thereof; a
dispersant-detergent-inhibitor system of less than 15 weight
percent of the composition; at least one non-corrosive ashless
sulfur additive present in an amount of at least 0.1 and less than
4.0 weight percent of the composition wherein by non-corrosive
is meant that when the lubricating oil composition containing
such ashless sulfur additive is evaluated in accordance with the
ASTM D-130-9 copper corrosion test, the lubricating oil
composition exhibits a classification of 2B or better; at least
one zinc dithiophosphate additive present in an amount of at
most about 0.5 weight percent of the composition; at least one
ashless antioxidant, so that the lubricating oil composition has
at least 100 PPM and less about 530 PPM phosphorus, at least
105 PPM and less than 710 PPM zinc, at least 1,000 PPM and
less than 3,000 PPM sulfur, at least 80 PPM and less than 450
PPM boron and TBN in the range of 1 to 9, and wherein the
wear and oxidation resistance are improved as compared to
lubricating oils which contain the organic boron containing
additive, the dispersant-detergent-inhibitor system, the
antioxidant and the zinc dithiophosphate additive but which
lack the non-corrosive ashless sulfur additive.

Appeal 2013-001849
Application 11/731,880

3
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 1–4, 7, 8, 10, and 12 over Farng (U.S. 6,730,638 B2, patented
May 4, 2004) in view of Baranski (US 2005/0222447 A1, pub. Oct. 6, 2005)
and Cazin (US 6,124,247, patented Sep. 26, 2000);
claims 1–4, 8, 7, 10, and 12 over Farng in view of Boffa (US
2006/0025313 A1, pub. Feb. 2, 2006) and Cazin; and
claims 1–4, 7, 8, 10, 12, and 13 over Farng in view of Yagishita (US
2005/0130855 A1, pub. June 16, 2005) and Cazin.
Appellants do not present separate arguments specifically directed to
the dependent claims under rejection (see App. Br. 9–13). As a
consequence, these claims will stand or fall with their parent independent
claim 1.
We sustain the above rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer. The following comments are added for
emphasis only.
Appellants contest the Examiner’s conclusion that it would have been
obvious to provide Farng’s lubricating oil with the borated additives and the
non-corrosive ashless sulfur additives of the secondary references by arguing
that the performance resulting from such a provision is not predictable (see,
e.g., App. Br. 10, 1st ¶). This argument is not persuasive because the
secondary references expressly teach the performance to be reasonably
expected by their respective additives as fully detailed by the Examiner (see,
e.g., Final Action 6, 8–9). Therefore, it would have been obvious for one
having ordinary skill in this art to provide the lubricating oil of Farng with
the additives of the secondary references in order to obtain the predictable
Appeal 2013-001849
Application 11/731,880

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use of these additives according to their established functions (id.). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (In assessing the
obviousness of a claim to a combination of prior art elements, the question
to be asked is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.”).
Appellants further argue that data in the Farng Declaration of record
and in their Specification show unexpected results (see, e.g., App. Br. 10).
The Examiner has provided the record with thoroughly developed reasons
for considering the results in question to be expected rather than unexpected
and for considering the data proffered by Appellants to be not commensurate
in scope with claim 1 (see, e.g., Final Action 33–36, Ans. 34–41). We
emphasize that Appellants in both their Appeal and Reply Briefs fail to
address, and therefore necessarily fail to show error in, the Examiner’s
reasons. Under these circumstances, Appellants’ argument regarding
unexpected results lacks convincing merit.
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. § 1.136(a).

AFFIRMED

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