Ex Parte Emert et al

Board of Patent Appeals and Interferences

Nov 28, 2007

10212858 (B.P.A.I. Nov. 28, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACOB EMERT and ANTONIO GUTIERREZ
____________

Appeal 2006-3015
Application 10/212,858
Technology Center 1700
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Decided: November 28, 2007
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and CATHERINE Q.
TIMM, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 20, all of the claims pending
in the above-identified application. We have jurisdiction pursuant to 35
U.S.C. § 6.

Appeal 2006-3015
Application 10/212,858

STATEMENT OF THE CASE
The subject matter on appeal is directed to “detergents for lubricating
oil compositions and lubricating oil compositions containing such
detergents” (Specification 1, ll. 4-5). Further details of the appealed subject
matter are recited in representative claims 1 and 7 reproduced below:
1. The reaction product of:
(i) an overbased oil soluble detergent comprising an
alkali- or alkaline earth metal hydrocarbyl phenate,
carboxylate or sulfonate; and
(ii) from about 0.5 to about 10 wt. % of an α,
β-unsaturated carbonyl compound, based on the total
weight of active product.

7. A lubricating oil composition comprising:
(a) oil of lubricating viscosity;
(b) a nitrogen-containing dispersant; and
(c) a modified detergent comprising the reaction product
of:
(i) an oil soluble detergent comprising an alkali- or
alkaline earth metal hydrocarbyl phenate,
carboxylate or sulfonate; and
(ii) from about 0.5 to about 10 wt. % of an α,
β-unsaturated carbonyl compound, based on the
weight of active product.

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According to pages 3 through 6 of the Specification, the claimed reaction
products, overbased oil soluble detergents and α, ß-unsaturated carbonyl
compounds are defined as follows:

Detergents that may be used include oil-soluble neutral
and overbased sulfonates, phenates, sulfurized phenates,
thiophosphonates, salicyclates, and naphthenates and other oil-
soluble carboxylates of a metal, particularly the alkali or
alkaline earth metals, e.g., barium, sodium, potassium, lithium,
calcium, and magnesium….
….
Carboxylate detergents, e.g., salicylates, can be prepared
by reacting an aromatic carboxylic acid with an appropriate
metal compound such as an oxide or hydroxide and neutral or
overbased products may be obtained by methods well known in
the art….
….
To provide the modified detergent, a metal-containing, or
ash-forming, detergent is reacted with [an] α, ß-unsaturated
carbonyl compound. Examples of suitable α, ß-unsaturated
carbonyl compounds include maleic acid and anhydride, alkyl
and cycloalkyl maleic acid, itaconic acid and anhydride, acrylic
acid and anhydride, methacrylic acid and anhydride and
citriconic acid and anhydride. Preferred α, ß-unsaturated
carbonyl compounds include maleic anhydride, itaconic
anhydride, acrylic acid and methacrylic acid, most preferably
maleic anhydride. To provide the desired properties, the
detergent is reacted with from about 0.5 to about 10, preferably
from about 1 to about 6, more preferably from about 2 to about
5 wt. %, e.g., 2 to 4 wt. %, of the α, ß-unsaturated carbonyl
compound, based on the weight of detergent. The reaction can
be carried out at temperatures of from about 30°C to about
200°C, preferably from about 60°C to about 150°C, more
preferably from about 80°C to about 120°C, for about 0.5 hours
to about 8 hours. The reaction can be conducted neat, or using a
conventional solvent media, such as a mineral lubricating oil
solvent so that the final product is in a convenient lubricating
oil solution that is entirely compatible with a lubricating oil
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base stock and these generally include lubricating oils having a
kinematic viscosity (ASTM D-445) of from about 2 to about
40, preferably from about 5 to 20 centistokes at 99°C.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Watson US 4,328,111 May 4, 1982
Schetelich US 4,502,970 Mar. 5, 1985

The Examiner has rejected the claims on appeal as follows:
1. Claims 1 through 6 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Watson (Answer 3); and
2. Claims 7 through 20 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Watson and Schetelich (Answer 4).
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).1

PRINCIPLES OF LAW, FACTS, ISSUES and ANALYSES
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g.,
unexpected results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18 (1966). “[A]nalysis [of whether the subject matter of a claim would
be obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the

1 We limit our discussion to claims 1, 7, 15, 16, and 20 consistent with 37
C.F. R. 41.37(c)(1)(vii) (2005).
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inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), see also DyStar
Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006)(“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969)(“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”).
As evidence of obviousness of the subject matter defined by claims 1
through 6 under 35 U.S.C. § 103(a), the Examiner has relied on the
disclosure of Watson. We find that Watson describes an additive
composition useful for improving the properties of lubricating oil (col. 1, ll.
5-10 and col. 3, ll.26-28). We find that Watson describes at col. 2, ll. 28-39,
its improved additive composition as:
[T]he reaction product of basic compound comprising
overbased metal sulfonate, phenate, or mixtures thereof, with
acidic compound comprising organic carboxylic acid, organic
carboxylic acid anhydride…the metal comprises magnesium,
calcium, barium, or mixtures thereof, the organic carboxylic
acid comprises about 1 to about 100 carbon atoms, the organic
acid anhydride comprises about 4 to about 100 carbon atoms…

We find that Watson teaches (col. 2, l. 59 to col. 3, l. 14) that:
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The acidic compound improves the detergency, antirust,
antiwear, water sensitivity, processability, or manufacturing
solvent separation properties of the overbased sulfonate,
phenate, or mixtures thereof. Suitable acidic compounds can be
identified by reacting the compounds with overbased material
or intermediate of the overbased material, and then testing such
reaction product alone or in oil solution by routine tests to
determine the improvements described above. Because not all
organic carboxylic acids or anhydrides, phosphoric acid or acid
esters, or mixtures thereof improve the various above
mentioned properties, they must be tested and determined
empirically.
……
The composition can be formed over wide ranges of basic
compound to acidic compound. Generally, the milliequivalent
ratio of basic compound to acidic compound is about 1.5 to
about 50:1, preferably about 2 to about 20.

The Appellants also acknowledge at page 5 of the Brief that “[t]he Watson et
al. patent (at col. 7, lines 48 through 64) provides a description of acids and
anhydrides that can be used and mentions specifically, 45 substances, only
three of which are α, ß-unsaturated carbonyl compounds (maleic anhydride,
acrylic acid and methacrylic acid).” We find that Watson also employs a
maleic anhydride in its Example 8 (cols. 12 and 13).
Given the above teachings, we determine that one of ordinary skill in
the art would have been led to employ the optimum or workable amounts of
the appropriate acidic compounds, including the claimed acidic compounds
(α, ß-unsaturated carbonyl compounds), specifically taught in Watson for
given amounts of basic compounds (overbased magnesium or calcium
sulfonates or phenates), with a reasonable expectation of successfully
reacting them with the overbased magnesium or calcium sulfonates or
phenates to form reaction products suitable for improving the properties of
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lubricating oil. Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d
804, 807 (Fed. Cir. 1989), cert. denied, (holding that a prior art disclosure of
a chemical genus would have rendered the claimed species fall within that
genus prima facie obvious to one of ordinary skill in the art.); see also In re
Peterson, 315 F.3d 1325, 1329 (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.”). This is especially true in this situation since Watson teaches
that it is well within the ambit of one of ordinary skill in the art to determine
the optimum or workable amounts of the appropriate acidic compounds (α,
ß-unsaturated carbonyl compounds) for given amounts of basic compounds
(overbased magnesium or calcium sulfonates or phenates) to form
appropriate reaction products having desired properties via routine
experimentation as indicated supra. Compare In re Boesch, 617 F.2d 272,
276 (CCPA 1980)(“[D]iscovery of an optimum value of a result effective
variable… ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454,
456 (CCPA 1955)(“[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.”).
As a rebuttal to the prima facie case established by the Examiner, the
Appellants appear to contend that Watson teaches away from the claimed
subject matter and that the claimed subject matter imparts unexpected results
(Br. 4-8). In support of these contentions, the Appellants refer to certain
teachings in Watson, Table II of Example 8 on pages 32 to 33 of the
Specification, and a Declaration executed by Antonio Gutierrez, one of the
inventors named in the instant Application, on June 30, 2004, respectively
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(id). Table II of Example 8 at pages 32 and 33 of the Specification and
Tables 1 and 2 of the Declaration appear to provide inconsistent data. While
Specification Table II indicates that the viscosity of the detergent is reduced
as its MA (a maleic anhydride) content increases, Declaration Tables 1 and 2
show that the viscosity of the detergent is reduced as its MA (a maleic
anhydride) content decreases. The Declaration also alleges that “[t]he
24.6wt% MA sample [which] closely approximates the material of Example
8 of [Watson]” turns into an unacceptable gel.2
The dispositive question is, therefore, whether the Appellants have
proffered sufficient evidence to rebut the prima facie case of obviousness
established by the Examiner. On this record, we answer this question in the
negative.
As recognized by the Examiner (Ans. 5-6), the Appellants have not
demonstrated that Watson teaches away from the subject matter
encompassed by claim 1 on appeal. Although Watson indicates that some
organic carboxylic acids and anhydrides may not be useful for improving the
properties of lubricating oil, it does not foreclose one of ordinary skill in the
art from employing any and all of the claimed α, ß-unsaturated carbonyl
compounds to form reaction products suitable for lubricating oil. Indeed, as
indicated supra, Watson teaches that the selection of the optimum or
workable percentages of the appropriate organic carboxylic anhydrides,
inclusive of those embraced by broad claim 1 on appeal, is well within the
ambit of one of ordinary skill in the art. There is nothing in Watson which

2 The Appellants’ arguments at pages 5-6 of the Brief indicates that this
alleged approximation is based on an assumption based on no factual
foundation.
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would have taught away from using the claimed percentages of any, much
less all, of those α, ß-unsaturated carbonyl compounds encompassed by
claim 1 on appeal. In fact, the Appellants acknowledge that Watson at least
specifically names forty five substances, including at least three of the
claimed α, ß-unsaturated carbonyl compounds, which are said to be suitable
for forming reaction products useful for improving various properties of
lubricating oil (Br. 5). Of the three specifically mentioned, we find that
Watson employs at least one of them (a maleic anhydride) in its Example 8
in forming a reaction product suitable for imparting excellent (not the best)
rust inhibiting properties (cols. 12 and 13). Compare Merck &Co. v.
Biocraft Labs., 874 F.2d at 807, quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)(“[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.”); see also In re Boe, 355
F.2d 961, 965 (CCPA 1966). Consequently, we concur with the Examiner
that the Appellants have not proven that Watson would have discouraged
one of ordinary skill in the art from using the claimed percentages of all of
those carbonyl compounds encompassed by claim 1 on appeal.
As also recognized by the Examiner (Ans. 7-10), the Appellants have
not demonstrated that the claimed subject matter as a whole imparts
unexpected results. In re Soni, 54 F.3d 746, 749 (Fed. Cir. 1995) (Appellants
carry the burden of rebutting a prima facie case of obviousness); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972)(“[T]he burden of showing
unexpected results rests on a party who asserts them.”). Initially, we find
that both the Specification Example and the Declaration relied upon by the
Appellants do not show that the improvement alleged is unexpected.
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Klosak, 455 F.2d at 1080. Specifically, we find that Watson, like the
showing in the Specification and the Declaration, recognizes the importance
of selecting appropriate amounts of appropriate anhydrides or acids
(inclusive of the claimed α, ß-unsaturated carbonyl compounds) to control
the viscosities of reaction products useful for lubricating oil (col. 7, ll. 31-
40). We find that Watson clearly directs one of ordinary skill in the art away
from employing any amounts of the claimed anhydrides taught by Watson
that would result in undesirable high viscosity products, especially gels (id).
This is especially true in this case since one of ordinary skill in the art would
have readily recognized such a gelling problem by simple observation. In re
Ludwig, 353 F.2d 241, 243-44 (CCPA 1965). Accordingly, we determine
that the selection of appropriate amounts of appropriate acidic compounds
(the claimed α, ß-unsaturated carbonyl compounds) to form reaction
products having desired viscosities is expected from the disclosure of
Watson. In re Skoner, 517 F.2d 947, 950 (CCPA 1975)(“Expected
beneficial results are evidence of obviousness of a claimed invention…[j]ust
as unexpected beneficial results are evidence of unobviousness.”).
Secondly, we find that the showing in the Specification and the
Declaration is not reasonably commensurate in scope with the degree of
protection sought by the claims on appeal. In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). While the showing
appears to be limited to one or two specific maleated overbased magnesium
sulfonates, the claims on appeal are not so limited. The Appellants have not
demonstrated that the multifarious overbased alkali- or alkaline earth metal
hydrocarbyl sufonates, phenates or carboxylates and α, ß-unsaturated
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carbonyl compounds encompassed by, e.g., claim 1 on appeal would
produce reaction products having the same or similar properties as those
shown in the Specification or the Declaration.
Thirdly, we find that the showing in the Specification and the
Declaration is confusing. In re Dunn, 349 F.2d 433, 439 (CCPA
1965)(“While we do not intend to slight the alleged improvements, we do
not feel it an unreasonable burden on appellants to require comparative
examples relied on for non-obviousness to be truly comparative. The cause
and effect sought to be proven is lost here in the welter of unfixed
variables.”). It is not clear what in fact is improving the viscosities of
reaction products since the showing in the Specification and the Declaration
appears to be contradictory as indicated supra.
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter defined by claims 1
through 6 within the meaning of 35 U.S.C. § 103.
As evidence of obviousness of the subject matter defined by claims 7
through 20 under 35 U.S.C. § 103(a), the Examiner has relied on the
combined disclosures of Watson and Schetelich. In addition to the
disclosures of Watson discussed above, we find that Watson teaches
employing its reaction products, together with other additives, such as a
dispersant, in lubrication oil (col. 9, ll. 9-17). Implicit in this teaching of
Watson is that an appropriate amount of a conventional dispersant is
employed to perform its dispersant function.
Although we recognize that Watson does not mention any specific
dispersant, we find that Schetelich teaches that the claimed nitrogen-
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containing dispersants in the proportions recited in claims 15, 16 and 20 on
appeal can be used together with overbased metal detergent additives (col. 1,
ll. 58-68). The Appellants also acknowledge at page 7, lines 1-4, of the
Specification that the claimed nitrogen-containing dispersants are “known to
be effective to reduce formation of deposits upon use in gasoline and diesel
engines, when added to lubricating oils.”
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the optimum or
workable amount (including the claimed proportion) of the claimed
nitrogen-containing dispersants, together with Watson’s overbased metal
detergents, in lubricating oil, with a reasonable expectation of successfully
performing the dispersant function. KSR, 127 S.Ct. at 1739 (“The
combination of familiar elements according to a known methods is likely to
be obvious when it does no more than yield predictable results.”). This is
especially true in this case since Watson teaches that any dispersants,
inclusive of the known effective nitrogen-containing dispersants, can be
employed together with its overbased metal detergents.
The Appellants appear to rely on the same arguments and evidence
discussed above to indicate that Watson does not render the claimed
detergents (reaction products) obvious (Br. 8). However, for the same
findings set forth above and in the Answer, we are not persuaded by these
arguments and evidence.
Accordingly, based on the factual findings set forth in the Answer
and above, we also determine that the preponderance of evidence weighs
most heavily in favor of obviousness of the subject matter defined by claims
7 through 20 within the meaning of 35 U.S.C. § 103.
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ORDER
In view of the forgoing, the decision of the Examiner is
affirmed.
TIME PERIOD
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/ls

INFINEUM USA L.P.
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