Ex Parte Elvidge et alDownload PDFPatent Trial and Appeal BoardJan 30, 201813376700 (P.T.A.B. Jan. 30, 2018) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/376,700 01/20/2012 Benjamin R. Elvidge PF2009M005 6850 25553 7590 01/30/2018 INFINEUM USA L.P. P.O. BOX 710 LINDEN, NJ 07036 EXAMINER OLADAPO, TAIWO ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 01/30/2018 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 BENJAMIN R. ELVIDGE and MARK D. ANDREWS ____________ Appeal 2017-005764 Application 13/376,700 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134 the final rejection of claims 1, 5, 6, and 9. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to automotive lubricating oil compositions, which include additives with friction modification properties (Spec. 1). 1 Appellants identify the real party in interest as Infineum International Limited (Br. 1). Appeal 2017-005764 Application 13/376,700 2 Claim 1 is illustrative (emphasis added): 1. A lubricating oil composition that is free of organic friction modifiers comprising, or made by admixing: (A) an oil of lubricating viscosity in a major proportion; (B) as an additive component in a minor proportion, a separately prepared oil-soluble zinc salt of a dithiophosphoric acid, the dithiophosphoric acid being the reaction product of phosphorus pentasulphide with one or more alcohols, from 90 to 100 mole % of the alcohol or alcohols having the formula ROH where R is a linear C18 to C22 double-bond unsaturated hydrocarbyl group and any alcohol or alcohols, other than those of formula ROH, have the formula R1OH where R1 has 3 to 12 carbon atoms and is an alkyl or alkenyl group; and (C) as an additive component in a minor proportion, a separately-prepared oil-soluble zinc salt of a dithiophosphoric acid, the dithiophosphoric acid being the reaction product of phosphorus pentasulphide with one or more aliphatic alcohols consisting of an alcohol or alcohols having from four to eight carbon atoms wherein 90 to 100 mole % of said aliphatic alcohols are secondary aliphatic alcohols; wherein (B) and (C) together introduce 0.02 to 0.09 mass % of phosphorus, expressed as phosphorus atoms, into the composition; and wherein (B) constitutes 75 to 95 mole % of the total number of moles of (B) and (C). Appeal Br. 7–8 (App.). Appellants appeal the following rejection: 1. Claims 1, 5, 6, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schwind et al. (US 6,642,187 B1, issued Nov. 4, 2003, “Schwind”) in view of Asano et al. (EP 0768366 B1, published June 13, 2001, “Asano”). Appeal 2017-005764 Application 13/376,700 3 Appellants do not argue any of the dependent claims separately (Br. 3–6). We select independent claim 1 as representative of dependent claims 5, 6, and 9. Any claim not argued separately will stand or fall with our analysis of the rejection of claim 1. FINDINGS OF FACT AND ANALYSIS The Examiner’s findings and conclusions regarding Schwind and Asano are located on pages 2–5 of the Final Action dated May 11, 2015 and pages 3–5 of the Answer dated October 14, 2016. The Examiner relies on Schwind for teaching every limitation of the claimed lubricating oil composition except the requisite 75 to 95 mole % of a zinc salt of a dithiophosphoric acid (“zddp”) (B) of the total moles from (B) and (C) (Ans. 3–4). As the Examiner found, “Asano similarly teaches lubricating oil compositions comprising mixtures . . . wherein such mixtures can comprise 20:80 up to 80:20 wt. % mixtures of the primary zddp compounds [i.e., zddp (B)] to the secondary zddp compounds [i.e., zddp (C)] which overlaps the claimed limitation” (id. at 4). Therefore, according to the Examiner, the amounts of zddp compounds (B) and (C) “in such mixtures are known in the art and would have been obvious to persons of ordinary skill in the art practicing the invention of Schwind as evidenced by Asano” (id.). The applied prior art’s disclosure of compositions containing components in amounts that overlap the mole % range of (B) recited in claim 1 would have rendered the claimed subject matter obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (holding that a prima facie case of obviousness typically exists when the ranges of a claimed Appeal 2017-005764 Application 13/376,700 4 composition overlap the ranges disclosed in the prior art). Appellants do not directly argue that the Examiner has failed to establish a prima face case of obviousness based on the teachings of Schwind and Asano (Br. 4). Therefore, we find that the preponderance of the evidence of record favors the Examiner’s obviousness conclusion. When the Examiner establishes a prima facie case of obviousness, “[t]he burden then shifts to the applicant, who then can present arguments and/or data to show that what appears to be obvious, is not in fact that, when the invention is looked at as a whole.” In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990) (en banc). Thus, “the burden of showing unexpected results rests on [the party] who asserts them.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants argue that any established prima facie case of obviousness “would be addressed, and overcome, by the unexpected results demonstrated by the comparative data provided in the present specification” (Br. 3–4). For the reasons set forth below, Appellants have not met their burden of showing unexpected results. Specifically, Appellants argue that evidence in the Specification demonstrates “that the specific combination of ZDDP components now claimed provides a friction modifying effect, in addition to the expected antiwear effect,” and that this additional advantage is unrecognized by the applied prior art (id. at 5). Appellants’ argument is not persuasive. We agree with the Examiner that “[t]he examples do not provide antiwear properties of any of the formulations” (Ans. 9). Likewise, we are not persuaded that the evidence provided in the Specification demonstrates an unexpected friction modifying Appeal 2017-005764 Application 13/376,700 5 effect because the inventive examples are not commensurate in scope with the claims. First, claim 1 encompasses a zddp (B) prepared from: (i) 90 to 100 mole % of alcohol(s) having an unsaturated C18 to C22 aliphatic group and (ii) the remainder from 0 to 10 mole % of alcohol(s) having a C3 to C12 aliphatic group. As the Examiner found, however, the mere exemplification of zddp Z1, which is prepared from 100 mole % of an alcohol having a linear C18 unsaturated group, “does not support the breadth of the claims which allows for use of combinations of as little as 90% of any unsaturated C18 to C22 aliphatic groups with as much as 10% of C3 to C12 aliphatic group” (id. at 6–7). Appellants assert that C18 to C22 chains derived from “‘fatty acids’ . . . would all be expected to provide a similar effect” (Br. 5). Appellants’ argument is not persuasive because attorney argument cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). In this instance, the record evidence is silent as to any evidence supporting Appellants’ position. Second, claim 1 further encompasses a zddp (C) prepared from: (i) 90 to 100 mole % of secondary C4 to C8 aliphatic alcohol(s) and (ii) the remainder from 0 to 10 mole % of other C4 to C8 aliphatic alcohol(s). However, evidence in the Specification only provides testing of zddp Z7, which is derived from: (i) 90 mole % secondary C4 alcohol and (ii) 10 mole % primary C8 alcohol (Spec. 18; Table 2). Appellants argue that “a component having 90 mole % secondary alcohol units should be considered representative of the limited range of 90 Appeal 2017-005764 Application 13/376,700 6 to 100 mole % of secondary alcohol units, particularly as appellants have tested a range of ratios of Z1 to Z7” (Br. 5). Appellants’ arguments are not persuasive. We agree with the Examiner that “the specific sec-C4 alcohol [at 90 mole %] does not represent all sec-C4 to C8 alcohol [from 90 to 100 mole %] allowed by the claims” (Ans. 7). Moreover, we find that the 10 mole % primary C8 alcohol does not support the breadth of claim 1, which encompasses all C4 to C8 non-secondary aliphatic alcohol(s) from 0 to 10 mole %. Third, claim 1 encompasses a lubricating oil composition comprising 75 to 95 mole % of zddp (B) of the total moles from (B) and (C). However, as the Examiner found, [t]he inventive examples in Table 2 requires mixtures of one specific type of the first zddp (Z1) with one specific type of the second zddp (Z7) to comprise the first zddp in amounts of 75% [and] 85% which is not commensurate in scope with the claims as i[t] fails to provide the upper endpoint of 95%. (id.). In particular, we agree with the Examiner that the exemplified compounds Z1 and Z7 do not provide criticality of the claimed ranges, which encompass: (i) a first zddp (B) prepared from as little as 90 mole % of an unsaturated C18 to C22 aliphatic group (with the remainder as much as 10 mole % of alcohol(s) having a C3 to C12 aliphatic group), (ii) a second zddp (C) prepared from as much as 100 mole % of a secondary C4 to C8 group, and (iii) as much as 95 mole % from the first zddp (B) of the total moles from zddp compounds (B) and (C) (id. at 8). On this record, we find that the preponderance of the evidence favors the Examiner’s obviousness conclusion with regard to claim 1. Appeal 2017-005764 Application 13/376,700 7 We affirm the Examiner’s § 103(a) rejection of claims 1, 5, 6, and 9. 37 C.F.R. § 41.37(c)(1)(iv). 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)(1)(iv). ORDER AFFIRMED Copy with citationCopy as parenthetical citation