Ex Parte Chasan et al

Board of Patent Appeals and Interferences

Jun 20, 2007

10465423 (B.P.A.I. Jun. 20, 2007)

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for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID E. CHASAN and SUNRAY DiFRANCESCO
____________________

Appeal 2007-0691
Application 10/465,423
Technology Center 1700
____________________

Decided: June 20, 2007
____________________

Before FRED E. McKELVEY, Senior Administrative Patent Judge,
and TEDDY S. GRON and SALLY C. MEDLEY, Administrative Patent
Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the case
This ex parte appeal under 35 U.S.C. § 134(a) is from a rejection of
claims 1, 4-8 and 11-12, the only claims remaining in the application on
appeal.
We have jurisdiction under 35 U.S.C. § 6(b).

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The application on appeal was filed on 19 June 2003 and was
published as 2004/00338835 A1 on 26 February 2004. Since the pages of
the specification in the PTO's IFW (image file wrapper) are not numbered,
reference to the specification in this opinion will be to the specification as
published.
Appellants (hereafter Ciba) claim benefit of an earlier filing date
based on Provisional Application 60/401,299, filed 06 August 2002.
The real party in interest is Ciba Specialty Chemicals.
The Examiner rejected all of the claims under 35 U.S.C. § 103(a) as
being unpatentable over any one of (1) Phillips, (2) Chasan, or (3) Reyer-
Gavilan. (The reader should know that no references to et al. are made in
this opinion.)
The following prior art was relied upon by the Examiner.

Name Patent Number Issue Date15
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Phillips US 4,734,209 29 Mar 1988
Chasan US 5,580,482 03 Dec 1996
Reyes-Gavilan US 6,410,490 B1 25 Jun 2002

Phillips and Chasan are prior art under 35 U.S.C. § 102(b).
Reyes-Gavilan is prior art under 35 U.S.C. § 102(e) having been filed
on 18 May 2000, which is prior to Ciba's earliest possible filing date of
06 August 2002 and under 35 U.S.C. § 102(a) having issued less than one
year prior to Ciba's filing date of 19 June 2003.
In this appeal, Ciba has not attempted to antedate Reyes-Gavilan.
Accordingly, for the purpose of this appeal, Reyes-Gavilan is prior art.
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B. Record on appeal
In deciding this appeal, we have considered only the following
documents:
1. Specification, including original claims, as published in U.S.
Published Application 2004/00338835 A1 (26 February 2004)
2. Final Rejection entered 06 December 2005
3. The Appeal Brief filed 08 June 2006
4. Chasan declaration filed 08 June 2006
5. The Examiner’s Answer entered 17 August 2006
6. Phillips
7. Chasan
8. Reyes-Gavilan
9. Chasan declaration filed 08 June 2006
10. PTO bibliographic data sheet for the application on appeal
11. Claims on appeal as reproduced in the Appeal Brief

C. Issues
There are several issues.
A first issue is the scope of the claims on appeal.
A second issue is whether Ciba has shown that the Examiner erred in
rejecting the claims on appeal as being unpatentable under 35 U.S.C.
§ 103(a) over the prior art.
Related to the second issue, is whether Ciba has supplied a clear and
convincing showing of unexpected results.

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D. Findings of fact
The following findings of fact are believed to be supported by a
preponderance of the evidence. To the extent that a finding of fact is a
conclusion of law, it may be treated as such. Additional findings as
necessary may appear in the Discussion portion of the opinion.
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The invention
The invention relates to engine oil compositions that are said to be
non-aggressive towards lead. Published application, ¶ 0001.
According to Ciba, engine oil specifications are becoming more
stringent in the way of performance requirements and new formulations are
under development to meet these new specifications [¶ 0004].
Engine oil specifications are said to be defined in ASTM D 4485
[¶ 0004].
New engine oil formulations comprise certain additive chemistries
[¶ 0005].
Many of these additive chemistries are corrosive to lead [¶ 0005].
It is said to be difficult for formulators to meet the present engine oil
specifications by employing certain beneficial additives while also meeting
the specification for lead corrosion [¶ 0005].
From 1994 onward, diesel oils have been required to meet a lead
corrosion specification defined in ASTM D 4485 and as measured according
to either ASTM D 5968 (run at 125ºC) or ASTM D 6594 (run at 135ºC)
[¶ 0006].
ASTM D 4485 Standard Specification for Performance of Engine Oils
indicates a maximum allowed lead corrosion level of 60 ppm for API
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[American Petroleum Institute] categories CF-4 and CG-4 by ASTM D 5968
and 120 ppm for category CH-4 by ASTM D 6594 [¶ 0006].
Various components of formulated engine oils cause lead corrosion
[¶ 0007].
For example, desired additive chemistries that are aggressive towards
lead and are otherwise disqualified from use in engine oils include sulfur-
containing additives [¶¶ 0008 and 0132].
The engine oils useful in the invention include diesel and universal
oils [¶ 0011].
Universal oils encompass both diesel oils and passenger car oils
[¶ 0011].
The engine oils are employed in internal combustion engines, for
example, in motor vehicles fitted with engines of the Otto, Diesel, two-
stroke Wankel or orbital type [¶ 0011].
The engine oils comprise (a) a base fluid [¶ 0014], (b) a triazole
[¶ 0015] and (3) an additive that is aggressive towards lead [¶ 0017].
A suitable triazole is 1-(di-(2-ethylhexyl)aminomethyl)-1,2,4-triazole.
Example 1 in the specification is said to show the advantages of the
invention [¶¶ 0144 and 0145].
For the purpose of deciding the appeal, we will assume that the
procedure in Example 1 was actually carried out and that the results reported
were actually obtained.
A "fully formulated non-corrosive engine oil" is used as the base
formulation, to which is added 1.0 weight % glycerol monooleate (GMO) or
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0.5 weight % of a sulfur-containing anti wear/extreme pressure additive
diternonly-trisulfide (TSP® 27).
To samples of (1) the base formulation, (2) the base formulation
with GMO and (3) the base formulation with TSP 27) there was added Ciba
product Ingamet® 30, viz., 1-(di-(2-ethylhexyl)aminomethyl)-1,2,4-triazole.
The base formulation without Ingamet 30 (or GMO or TSO) had a
lead content of 75 ppm.
The base formulation with GMO and without Ingamet 30 had a lead
content of 358 ppm.
The base formulation with GMO and Ingamet 30 had a lead content of
29 ppm.
The base formulation with TSP and without Ingamet 30 had a lead
content of 117 ppm.
The base formulation with TSP and Ingamet 30 had a lead content of
45 ppm.
We are told that the base formulations with GMO or TSP, but without
Ingamet 30 are unsuitable for use [¶ 0146].
We are also told that the base formulations with Ingamet 30 and either
GMO and TSP have lead levels which are "very acceptable levels" [¶ 0146].

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Claims on appeal
Claim 1 is representative of the composition claims on appeal.
Claim 1 reads [matter in brackets added]:
An engine oil composition which comprises:
(a) a base fluid,
(b) 1-(di-(2-ethylhexyl)aminomethyl)-1,2,4-triazole,
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and
(c) at least one oil additive selected from the group
consisting of the [1] sulfur-containing antioxidants, [2] sulfur-containing
antiwear additives and [3] sulfur-containing copper passivators,
and
wherein in the absence of component (b), the engine oil
composition exceeds about 100 ppm lead as measured according to test
ASTM D 6594.

Claim 12 is representative of the method claims on appeal.
Claim 12 reads [matter in brackets added]:
A method of preventing corrosion of lead parts that are in the
presence of an engine oil composition comprising
(a) a base fluid and
(b) at least one oil additive selected from the group consisting
of the [1] sulfur-containing antioxidants, [2] sulfur-containing antiwear
additives and [3] sulfur-containing copper passivators,
which method comprises incorporating into said engine oil
composition
(c) 1-(di-(2-ethylhexyl)aminomethyl)-1,2,4-triazole,
where in the absence of component (b), the engine oil composition
exceeds about 100 ppm lead as measured according to test ASTM D 6594.

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Chasan
In discussing the prior art, we find it necessary to discuss in detail
only Chasan.
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The Examiner's Answer discusses the other two prior art patents, viz.,
Phillips and Reyes-Gavilan.
The Examiner found that Chasan describes lubricant compositions
which are stabilized against deleterious effects of heat and oxygen.
Answer 4; col. 1:3-4.
The lubricant compositions, like those of Ciba, may be used in two-
stroke engines. Col. 1:13; Ciba Published Application 1 [¶ 0011].
The Examiner further found that the lubricant is made from (1) an oil,
(2) a triazole derivative, and (3) a succinic acid derivative. Answer 4; col.
2:19 through col. 3:15.
The formula of the triazole is shown as Formula I. Col. 2:35.
R1 and R2 in the formula may be hydrogen or C1-C10 alkyl, the latter
including 2-ethylhexyl. Answer 4; col. 2:40-41.
The most preferred triazole is 1-(bis-(2-ethylhexyl)aminomethyl)-
1,2,4-triazole, which is the same as 1-(di-(2-ethylhexyl)aminomethyl)-1,2,4-
triazole (the bis and the di meaning the same thing). The triazole is sold by
Ciba as IRGAMET® 30. Col. 4:60-65. Thus, Chasan describes as its
preferred triazole the triazole of the claims on appeal.
The Examiner still further found that Chasan teaches that various
other additives can be added to the Chasan lubricant composition.
Answer 4; col. 6:12 through 9:5.
The Examiner notes that Chasan teaches the use of sulphurized
vegetable oils as a sulfur-containing anti-wear and extreme pressure
additive. Answer 4; col. 8:66 through col. 9:5, with sulphurized vegetable
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oils being described at col. 9:2. Likewise, Ciba describes the use of
sulphurized vegetable oil. Published Application 4 [¶ 0097].
Based on her analysis of Chasan, the Examiner found that Chasan
describes lubricants which can contain all the ingredients called for by the
Ciba claims on appeal. Answer 4.
The Examiner's findings are more than adequately supported by
Chasan.
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Chasan Declaration
In response to the Examiner's prior art rejection, Ciba submitted a
declaration of Dr. David E. Chasan (one of the named inventors in the
application on appeal). "Declaration under Rule 132," filed 08 June 2006.
The declaration describes experiments which are said to be "an
extension of those in Example 1" of the specification. Declaration 1, fourth
paragraph.
The experiments were designed to compare the lead reducing
characteristics of the use of (1) IRGAMET 30, which is the triazole set out
in the claims on appeal and the preferred triazole described in the Chasan
patent, versus IRGAMET 39, which is another triazole described in the
Chasan patent (col. 4:60-65).
According to the experiments, the following results are said to have
been obtained.
A base formulation (a non-corrosive engine oil) with no metal
deactivator resulted in a lead content of 75 ppm.
A base formulation with only TPS® 27 [diternonlytrisulfide] and no
IRGAMET produced 117 ppm of lead.
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A base formulation with (1) TPS 27 and (2) IRGAMET 30 produced
43 ppm of lead.
A base formulation with (1) TPS 27 and (2) IRGAMET 39 produced
269 ppm of lead.
In a light most favorable to Ciba, the results show that the use of
IRGAMET 30 along with TPS produces the lowest lead level for the
particular oil used in the experiments.
According to Chasan, the results are surprising. Declaration 2, last
paragraph.

E. Principles of law
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 82 USPQ2d 1385 (2007); Graham v. John Deere Co. of Kansas City,
383 U.S. 1 (1966).
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR,
82 USPQ2d at 1389, Graham, 383 U.S. at 17-18.
A person having ordinary skill in the art uses known elements and
process steps for their intended purpose. Anderson's-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its
intended purpose in combination with a spreader and a tamper and screed);
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976). (the involved patent
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simply arranges old elements with each performing the same function it had
been known to perform); Dunbar v. Myers, 4 Otto (94 U.S.) 187, 195 (1876)
(ordinary mechanics know how to use bolts, rivets and screws and it is
obvious that any one knowing how to use such devices would know how to
arrange a deflecting plate at one side of a circular saw which had such a
device properly arranged on the other side).
An inventor must show that the results the inventor says the inventor
achieves with the invention are actually obtained with the invention and it is
not enough to show results are obtained which differ from those obtained in
the prior art—any difference must be shown to be an unexpected difference.
In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). See
also In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
Cir. 1997) (party asserting unexpected results has the burden of proving that
the results are unexpected).
A showing of unexpected results generally must be commensurate in
scope with the breadth of the claimed invention. In re Greenfield, 571 F.2d
1185, 1189, 197 USPQ 227, 230 (CCPA 1978). See also In re Harris, 409
F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005).

F. Discussion
An appeal is decided on the basis of the arguments presented by an
appellant—in this case arguments presented by Ciba in its Appeal Brief.
In it's Appeal Brief, Ciba acknowledges that the Examiner cited
Chasan as disclosing oil that comprises triazole derivatives. Appeal Brief 4.
Ciba goes on to say that is "respectfully disagrees." Appeal Brief 4.
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At the outset, it is not clear how Ciba can disagree when Chasan
plainly describes lubricants for two-stroke engines which contain as the
preferred triazole the triazole specified in the claims on appeal.
Ciba also maintains that experimental data in Example 1 of the
specification and the Chasan Declaration show the "merit of the present
invention."
To resolve the weight to be given the experimental data, it is first
necessary to determine the scope of the claims on appeal.
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Claim interpretation
During examination, pending claims are given their broadest
reasonable construction consistent with the specification. In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
We decline to give the preamble "[a]n engine oil composition" any
controlling weight because the nature of the composition is absolutely clear
from the three ingredients specified. Bristol-Myers Squibb Co. v. Ben Venue
Laboratories, Inc., 246 F.3d 1368, 1373, 58 USPQ2d 1508, 1512 (Fed. Cir.
2001) (if the body of the claim sets out the complete invention, and the
preamble is not necessary to give "life, meaning and vitality" to the claim,
"then the preamble is of no significance to claim construction because it
cannot be said to constitute or explain a claim limitation"). However, even
if the preamble was considered a limitation, Chasan—like Ciba—describes
its lubricant as being useful in a two-stoke engine.
A review of the plain language of composition of matter claim 1
reveals that a person of ordinary skill in the art would understand that Ciba
is claiming a lubricant composition comprising at least components (a), (b)
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and (c). In addition, Ciba attempts to limit the definition of (a) and (c) by
specifying that a lubricant comprising components (a) and (c), but without
component (b), produces a lead content which exceeds 100 ppm when
measured according to ASTM D 6594. The claim makes no attempt to
define the lead content of a lubricant comprising components (a), (b) and (c)
when measured according to ASTM D 6594. The claim reads on
compositions where the lead content of the claimed composition with
component (b) present could exceed the lead content when component (b) is
not present when measured according to ASTM D 6594.
Method claim 12 is similar. The only method step recited in claim 12
is "incorporating" into a composition comprising (a) and (c) a further
component (b). At no point in the claimed process is there a requirement
that the composition comprising components (a), (b) and (c) come into
contact with lead. It is difficult to see how a method of preventing corrosion
can take place by merely adding component (b) to a mixture of components
(a) and (c) and there is no contact with any lead source required.

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Weight to be given the experimental data
The Examiner declined to give the experimental data much weight
finding that it is not commensurate in scope with the breadth of the claims.
Answer 5.
The Examiner expressed a concern that a showing based on one
triazole and one sulfur-containing compound does not justify a finding that
the same triazole would achieve the lead-lowering properties with other
sulfur-containing compounds. Answer 5. In other words, the Examiner
raised the reasonable question of whether lead-lowering properties are solely
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a function of the triazole or are instead a function of the triazole and the
sulfur-containing compound.
In his declaration, Dr. Chasan testifies that the results he says he
obtained are "surprising." However, Dr. Chasan's "surprising" statement is
not a cogent response to the Examiner's concerns. In this respect, we note
that Ciba has not filed a reply to the Examiner's Answer.1 It is not clear on
what underlying basis Dr. Chasan says that the experimental data provides a
sufficient scientific basis for finding that Ciba's favored triazole will perform
a similar lead-reducing result with a representative number of the sulfur-
containing compounds falling within the Markush group of sulfur-containing
compounds set out in claims 1 and 12. The Examiner was not obligated to
accept Ciba's unsupported assertions of Ciba's expert witness. Rohm and
Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462
(Fed. Cir. 1997) (nothing in Federal Circuit jurisprudence requires the fact
finder to credit the unsupported assertions of an expert witness). We decline
to second-guess the weight the Examiner assigned to the experimental data.
The Examiner found that "it is not clear if the results presented are
indeed unexpected." Answer 6. The Examiner's finding is supported on this
record given that the claims on appeal do not limit the compositions and
methods to those which reduce lead-containing levels. As noted above, the
claims only define the lead levels of compositions containing components

1 To the extent that in some paper before the Examiner Ciba presented an
argument responding to the Examiner's concerns, no such argument is
presented in the Appeal Brief. The only arguments we consider on appeal
are those made in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(vii) (2006). All
other arguments which could have been made, but were not made, are
waived.
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(a) and (c). Also we find it difficult to overlook the fact that while Chasan
describes a "genus" of triazoles, Chasan identifies only two triazoles as
being preferred. Col. 4:60-65. We entertain no doubt that a person skilled
in the art, given the disclosure in Chasan, would have (1) known how to test
at least each of the two triazoles for metal-reducing characteristics, and
(2) would have expected one to be better than the other. That Ciba's favored
and claimed IRGAMET 30 triazole turned out to be that triazole is not
surprising.
Ciba has not met its burden, with clear and convincing evidence, of
establishing unexpected results commensurate in scope with the breadth of
the claims.

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Ciba's principal argument
Ciba's principal argument seems to be that none of the prior art
references "mention lead passivation, but rather only iron and copper
passivation." Appeal Brief 4. As pointed out previously, the claims on
appeal do not require any particular level of lead passivation. More to the
point is that one skilled in the art learns from Chasan that various
ingredients, including base fluids, triazoles and other ingredients can be used
to make a lubricant for a two-stroke engine. One skilled in the art uses
known elements to perform known functions even if those functions are to
obtain metal-reducing characteristics other than lead-reducing
characteristics. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc.,
396 U.S. 57, 59 (1969). That Ciba's focus was on one problem and the prior
art was addressing another problem is not dispositive, particularly where the
claims do not limit the alleged invention to the unexpected result said to be
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achieved. See KSR, 127 S. Ct. at ___, 82 USPQ2d at 1396; In re Dillon,
919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (en banc); In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996). We agree on
this record with the Examiner's observation that the claimed compositions
and methods are within the public domain in the § 103 sense and that
nothing on this record justifies removing the claimed subject matter from the
public domain. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 146 (1989); Graham v. John Deere Co., 383 U.S. 1, 6 (1966). In this
case, the Examiner has properly performed "[t]he primary responsibility [of
the Patent Office] for sifting out unpatentable material …" Graham, 383
U.S. at 18.

G. Conclusions of law
Ciba has not sustained its burden on appeal of showing that the
Examiner erred in rejecting the claims on appeal as being unpatentable under
35 U.S.C. § 103(a) over the prior art.
On the record before us, Ciba is not entitled to a patent containing the
composition and method claims on appeal.

H. Decision
ORDERED that the decision of the Examiner rejecting
claims 1, 4-8 and 11-12 over the prior art is affirmed.
FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv) (2006).

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AFFIRMED

Gron, Administrative Patent Judge, concurs in the result only.

lp
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cc (via First Class mail)

Tyler Stevenson
Ciba Specialty Chemical Corp.
540 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591-9005
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