Ex Parte Devlin et alDownload PDFPatent Trial and Appeal BoardAug 23, 201312144010 (P.T.A.B. Aug. 23, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent "nd Trademark Office Addro,,: COMMISSIONER fOR PATENTS P.o . Box 1450 Alcx.mdria. Virginia 223 13- 1(150 www.IISpIO.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONrlRMATION NO. 121144,010 06/23/2008 Mark T. Devlin 14 677-18 1673 45473 7590 08/29/2013 EXAMINER BRINKS, HOFER, GILSON & LIONE P.O. BOX 110285 OLADAPO, TA IWO RESEARCH TRIANGLE PARK, NC 27709 ART UNIT PAPER NUM BER 177 1 MAIL DATE DELIVERY MODE 08/29/2013 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 MARK T. DEVLIN, HELEN T. RYAN, and KATIE A. HUDSON ____________ Appeal 2012-003628 Application 12/144,010 Technology Center 1700 ____________ Before HUBERT C. LORIN, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003628 Application 12/144,010 2 On August 31, 2011, the Examiner finally rejected claims 1, 3-6, 8-11, 13, 14, 17 and 19-21 of Application 12/144,010 under 35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The ’010 application describes lubricant compositions that reduce friction in slideways containing plastic components and/or sliding surfaces to a greater extent than in slideways containing metal components and/or sliding surfaces (App. Br. 9). Claim 1 is representative of the ’010 application’s claims and is reproduced below: 1. A slideway lubricating oil composition that exhibits a coefficient of friction on a non-metal sliding surface that is lower than a coefficient of friction on a metal sliding surface, comprising: a base oil; a metal-free friction modifier selected from the group consisting of glyoxalidines, glycerides, and combinations thereof; and a metal-free and sulfur-free, phosphorus containing anti- wear/extreme pressure agent; wherein the composition provides a lower coefficient of friction for non-metal sliding surfaces than for metal sliding surfaces, and wherein the lubricating oil 1 Afton Chemical Corp. is identified as the real party in interest (Second Appeal Brief (“App. Br.”) 2 (Nov. 29, 2011)). Appeal 2012-003628 Application 12/144,010 3 composition is free of or essentially free of metal- containing friction modifiers. (App. Br. 14 (Claims App’x)). REJECTIONS On appeal, the Examiner, maintains the following rejections: 1. Claims 1, 3-6, 8-11, 14, 16, 17, and 19-21 are rejected under 35 U.S.C. § 103(a) as being obvious over Coates2 in view of Lawate3 (Ans. 4). 2. Claim 13 is rejected under 35 U.S.C. § 103(a) as being obvious over Coates in view of Lawate and further in view of Henly4 (Ans. 8). DISCUSSION Rejection 1. Appellants present two arguments for reversal of Rejection 1. In particular, Appellants argue that: (1) the Examiner has not established a prima facie case of obviousness (App. Br. 9-12), (2) that the Examiner improperly relied upon hindsight to choose glycerides from a list of antioxidants described in Lawate (id.), and (3) that they have presented evidence of unexpected results that, when weighed along with all of the other evidence regarding obviousness, leads to a conclusion that the 2 U.S. Patent No. 5,824,628, issued Oct. 20, 1998. 3 U.S. Patent No. 5,773,391, issued June 30, 1998. 4 U.S. Patent Application Publication No. 2007/0293406 A1, published Dec. 20, 2007. Appeal 2012-003628 Application 12/144,010 4 invention would not have been obvious to a person of ordinary skill in the art (id. at 12). We address these arguments seriatim. First, Appellants assert that the Examiner has not established a prima facie case of obviousness because an adequate reason to combine the teachings of Coates and Lawate has not been identified (App. Br. 9-12). An obviousness rejection based upon a combination of references must include “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, the Examiner found that Coates describes a slideway lubricant composition comprising a base oil such as an ester of a polyhydric alcohol, a phosphoric ester, and a phosphonate ester (Ans. 4). The Examiner also found that Lawate describes the use of glyceride antioxidants to stabilize a lubricating composition comprising an ester of a polyhydric alcohol (id. at 5). The Examiner therefore concluded that it would have been obvious to a person of ordinary skill in the art to use Lawate’s glyceride antioxidant in Coates’ slideway lubricant to stabilize the base oil (id.). Accordingly, the Examiner shifted the burden to Appellants to prove that the slideway lubricant described by the combination of Coates and Lawate did not have the claimed friction-reducing properties for metal and plastic slideways (id.). We conclude that the Examiner has articulated a reason for a person of ordinary skill in the art to combine the descriptions of Coates and Lawate that is supported by a rational underpinning. Accordingly, we are not persuaded by this argument. Second, Appellants argue that the prior art does not provide any reason for the Examiner “to select a glyceride as the antioxidant over the numerous other disclosed antioxidants, including the metal and sulfur Appeal 2012-003628 Application 12/144,010 5 containing phosphorous antioxidants to combine with the lubricant composition of [Coates]” (App. Br. 10). We are not persuaded by this argument. Our reviewing court and its predecessor have repeatedly held that the fact that an obviousness rejection is based upon a selection from a list of possible compounds is not a ground for reversal of the rejection. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant’s generic claims and [was] of a class of chemicals to be used for the same purpose as appellant’s additives”). Third, Appellants argue that “even if a prima facie case of obviousness were established, any presumption of obviousness is rebutted and overcome by the surprising and unexpected benefits exhibited by the claimed composition” (App. Br. 12). Appellants do not cite any evidence of the alleged surprising and unexpected results in their Appeal Brief. In their Reply Brief, however, Appellants argue that paragraph [0040] of the specification constitutes their evidence (Reply Br. 2). We are not persuaded by Appellants’ argument regarding the alleged unexpected results provided by the claimed composition. As has been explained: Appeal 2012-003628 Application 12/144,010 6 In order for a showing of “unexpected results” to be probative evidence of non-obviousness, it falls upon the applicant to at least establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972); and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention, id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971). In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). Paragraph [0040] of Appellants’ Specification establishes neither that there is a difference between the prior art and the claimed compositions nor that a person of ordinary skill in the art would have found any such difference to be unexpected. Paragraph [0040] reads, in its entirety: It is expected that a lubricant composition containing an amine-containing metal-free friction modifier and a metal- and sulfur-free phosphorus compound will provide superior boundary friction characteristics on plastic materials. Spec. ¶ [0040]. Appellants, therefore, have failed to identify any evidence of unexpected results in their brief. Because Appellants have an obligation to cite the evidence upon which they rely, 37 C.F.R. § 41.37(c)(1)(vii) (requiring Appellants to identify the “parts of the record relied upon” as part of their appeal brief), we need not further review the record for evidence in support of Appellants’ contention. See also Gross v. Town of Cicero, Ill., 619 F.3d 697, 702 (7th Cir. 2010) (“Judges are not like pigs, hunting for truffles buried in the record.”). For the foregoing reasons, we are not persuaded that the Examiner erred in rejecting claims 1, 3-6, 8-11, 14, 16, 17, and 19-21 as obvious over the combination of Coates and Lawate. Appeal 2012-003628 Application 12/144,010 7 Rejection 2. Appellants advance a single argument for reversal of the rejection of claim 13 as obvious in view of the combination of Coates, Lawate, and Henly: Claim 13 was rejected as being unpatentable over [Coates] in view of [Lawate] and further in view of U.S. Publication No. 2007/0293406 to Henly et al. However, the ’406 publication is not prior art as the ’406 publication was published on December 20, 2007, less than one year before the filing date of the present application and the ’406 publication and this application are commonly owned and were subject to assignment to the same assignee at the time the invention of the present application was made. Accordingly, the rejection of claim 13 should be withdrawn. (App. Br. 13). The Examiner replies that the inventive entities of Henly and the ’010 application are different and that Henly qualifies as prior art under 35 U.S.C. § 102(a)5 (Ans. 10-11). Appellants do not respond the Examiner’s findings and argument (see generally Reply Br.). We discern no error in the Examiner’s finding that Henly qualified as prior art under 35 U.S.C. § 102(a). Accordingly, we affirm the Examiner’s rejection of claim 13. 5 The Examiner’s Answer was filed on December 20, 2011, which is before the effective date for the America Invents Act (“AIA”), which substantially amended 35 U.S.C. § 102. We assume that the Examiner was citing the pre- AIA version of § 102. We also will cite the pre-AIA versions of § 102 and § 103 and express no opinion regarding the potential application of the AIA- amended versions of § 102 and § 103. Appeal 2012-003628 Application 12/144,010 8 CONCLUSION We have affirmed the Examiner’s rejections of claims 1, 3-6, 8-11, 13, 14, 17 and 19-21 of the ’010 application. 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 tc Copy with citationCopy as parenthetical citation