Ex Parte Elvidge et al

Patent Trial and Appeal Board

Oct 30, 2014

12416198 (P.T.A.B. Oct. 30, 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.
12/416,198 04/01/2009 Benjamin R. Elvidge PF2009L002 3968
25553 7590 10/31/2014
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
VASISTH, VISHAL V
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
10/31/2014 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 BENJAMIN R. ELVIDGE, NANCY Z. DIGGS,
NEAL J. MILNE, and NIGEL A. MALE
____________

Appeal 2013-003925
Application 12/416,198
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner's final
rejection2 of claims 1 through 15, which are all of the claims pending in the
above-identified application. A hearing was conducted on October 9, 2014.
We have jurisdiction over this appeal under 35 U.S.C. § 6.

1 The real party in interest is said to be “Infineum International Limited, a
company incorporated in England.” (Appeal Brief filed July 30, 2012
(“App. Br.”) at 1.)
2 Final Action mailed September 1, 2011.
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Application 12/416,198

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For the reasons set forth below, we REVERSED and ENTERED new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b). .
The subject matter on appeal is directed to “lubrication oil
compositions, in particular lubrication oil compositions for automotive
engines….” (Spec. 1, ll. 2-5.) Details of the appealed subject matter are
recited in representative claim 13 from the Claims Appendix of the Appeal
Brief, which is reproduced below:
1. A lubricating oil composition comprising a major amount of an oil
of lubricating viscosity and minor amounts of:
(a) a sulfurised ester,
(b) a primary antioxidant,
(c) a dihydrocarbyldithiophosphate metal salt, and
(d) an oil soluble organomolybdenum compound, providing no more
than 50 ppm of molybdenum to the composition.

(App. Br. 8, Claims App’x (emphasis added).)
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer mailed October 23, 2012
(“Ans.”):
1. Claims 1 through 15 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of U.S. Patent Application Publication 2006/0205615 A1
published in the name of Esche, Jr. on September 14, 2006 (hereinafter
referred to as “Esche”); and

3 Appellants have not separately argued the claims on appeal. (App. Br. 3-
8.) Therefore, for the purposes of this appeal, we select claim 1 as
representative of the claims on appeal and decide the propriety of the
Examiner’s rejection set forth in the Answer based on this claim alone
consistent with 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2013-003925
Application 12/416,198

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2. Claims 1 through 4 and 13 through 15 under 35 U.S.C.
§ 102(b) as anticipated by the disclosure of U.S. Patent Application
Publication 2004/0171500 A1 published in the name of Morita on
September 2, 2004 (hereinafter referred to as “Morita”). (App. Br. 3.)
DISCUSSION
Having carefully reviewed and considered the evidence of record and
arguments advanced by both the Examiner and Appellants, we reverse the
Examiner’s § 102(b) rejections and enter new grounds of rejection against
claims 1 through 15 under 35 U.S.C. § 103 as obvious over the disclosure of
Esche and against claims 1 through 4 and 13 through 15 under 35 U.S.C. §
103 as obvious over the disclosure of Morita pursuant to 37 C.F.R.
§ 41.50(b). Our reasons follow.
As found by the Examiner and recognized by Appellants, Esche and
Morita disclose or list the ingredients recited in claims 1 through 15 and the
ingredients recited in claims 1 through 4 and 13 through 15, respectively as
being useful for their lubricating oil compositions for automotive engines.
(Compare Ans. 3-4 with App. Br. 3-6.) For instance, the Examiner correctly
found that Esche exemplifies a lubricating oil composition comprising, inter
alia, a major amount of a base oil corresponding to the recited major amount
of an oil of lubricating viscosity, 0.8 wt.% of an aromatic amine antioxidant
corresponding to the recited minor amount of a primary antioxidant,
0.93 wt.% of mixed primary and secondary ZDDP corresponding to the
recited minor amount of a dihydrocarbyldithiophophate metal salt,
0.05 wt.% of a molybdenum containing friction modifier corresponding to
the recited minor amount of an oil soluble organomolybdenum compound
and 0.8 wt.% of sulfurized alpha-olefin antioxidant. (Esche 5, 8, ¶¶ [0048]-
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Application 12/416,198

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[0084] and [0105] and Table 1.) Recognizing that such lubricating oil
composition lacks a minor amount of a sulfurized ester and an amount of the
molybdenum containing friction modifier for providing no more than 50
ppm of molybdenum to the composition, the Examiner referred to
paragraphs [0044] and [0045] of Esche, which mention employing
sulfurized fatty oils, such ADDITIN R 4412- F (identified by Appellants as a
sulfurized ester), in lieu of the sulfurized alpha-olefin antioxidant, in a
lubricating oil composition. (Compare Ans. 2-3 with App. Br. 4.) The
Examiner also referred to paragraphs [0084] and [0094] of Esche, which
mention employing 0.001 % to 20 % by weight of additives, inclusive of the
molybdenum containing friction modifier, such as molybdenum
dithiocarbamates, which provide, upon calculation, inter alia, less than 50
ppm of molybdenum to the composition. (Compare Ans. 3 and 5 with App.
Br. 3-4.).
Similarly, Morita, like Esche, does not exemplify a lubricating oil
composition having all of the ingredients recited in the claims in its Table 1-
1. However, there is no dispute that Morita lists, inter alia, all of the claimed
ingredients in amounts that include those claimed as being useful for its
lubricating oil composition. (Compare Ans. 4 with App. Br. 6.)
As argued by Appellants at pages 3 through 6 of the Appeal Brief,
Esche or Morita does not clearly and unequivocally disclose the claimed
lubricating oil composition, without any need for picking and choosing a
particular group of antioxidants, such as sulfurized esters, and/or particular
amounts of the molybdenum containing friction modifier that would overlap
with those claimed to provide less than 50 ppm of molybdenum to the
composition. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972). In other
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Application 12/416,198

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words, Esche and Morita do not describe the claimed lubricating oil
composition with sufficient specificity to constitute anticipation within the
meaning of 35 U.S.C. § 102(b). See also Atofina v. Great Lakes Chemical
Corp., 441 F.3d 991, 999-1000 (Fed. Cir. 2006)(“Here, the prior art, …,
discloses a temperature range of 100 to 500 °C which is broader than and
fully encompasses the specific temperature range claimed … of 330 to 450
°C. Given the considerable difference between the claimed range and the
range in the prior art, no reasonable fact finder could conclude that the prior
art describes the claimed range with sufficient specificity to anticipate this
limitation of the claim.”)
However, such picking and choosing of a sulfurized ester antioxidant
and overlapping amounts of the molybdenum dithiocarbamate friction
modifier for providing less than 50 ppm of molybdenum to the composition
from the disclosures of Esche or Morita to arrive at the claimed lubricating
oil composition is “entirely proper in making a [section] 103 obviousness
rejection.” See App. Br. 5 quoting Arkley, 455 F.2d at 587-88; Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
‘813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); In re Peterson, 315
F.3d 1325, 1329-30 (Fed. Cir. 2003)(“In cases involving overlapping ranges,
we and our predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of obviousness.”) In other
words, we determine that one of ordinary skill in the art, armed with the
knowledge of the disclosure of Esche or Morita, would have been led to
employ a sulfurized ester antioxidant and overlapping amounts of the
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molybdenum dithiocarbamate friction modifier for providing less than 50
ppm of molybdenum in the lubrication oil composition of Esche or Morita,
with a reasonable expectation of successfully forming desirable lubricating
oil compositions for automobile engines.
According to Appellants, Tables 1 and 3 at pages 29 and 31 of the
Specification allegedly show that “the [unexpected] synergistic effect [is]
achieved by the combination of the four oxidants of the presently claimed
lubricating oil composition….” (App. Br. 6.) Thus, such data in the
Specification must be considered when assessing patentability. In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995) (citing In re Margolis, 785 F.2d 1029,
1031 (Fed. Cir. 1986)). However, the burden of analyzing and explaining
Specification data to support nonobviousness rests with Appellants. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also In re Huellmantel, 324
F.2d 998, 1003 (CCPA 1963) (stating synergism must be unexpected in
order to provide evidence of nonobviousness). It is incumbent upon
Appellants to evince that the Specification data actually demonstrates
unexpected results relative to the closest prior art, In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) and is reasonably commensurate
in scope with the degree of protection sought by the claims on appeal, In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980). However, on this record, Appellants have not
explained, much less alleged, why the Specification data is sufficient to
show that all of the multifarious lubricating oil compositions covered by the
claims on appeal impart unexpected results over the lubricating oil
composition exemplified in the closest prior art. (App. Br. 6.)
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Thus, on this record, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness under 35 U.S.C. § 103(a),
rather than anticipation under 35 U.S.C. § 102(b).

CONCLUSION
In view of the reasons set forth above, we reverse the Examiner’s
§ 102(b) rejections and enter new grounds of rejection against claims 1
through 15 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Esche and against claims 1 through 4 and 13 through 15 under 35 U.S.C.
§ 103(a) as unpatentable over the disclosure of Morita.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “new ground[s] of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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Application 12/416,198

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.50(b)

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