Ex Parte Gao

Board of Patent Appeals and Interferences

Mar 13, 2006

10181859 (B.P.A.I. Mar. 13, 2006)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JASON ZHISHENG GAO

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Appeal No. 2006-0623
Application 10/181,859 1
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ON BRIEF
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Before PAK, KRATZ, and JEFFREY T. SMITH, Administrative Patent
Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the examiner’s refusal
to allow claims 11 through 14, 16, 17, 19 and 20, which are all
of the claims pending in the above-identified application. We
have jurisdiction pursuant to 35 U.S.C. § 134.

1 Application for patent filed November 1, 2002.
Appeal No. 2006-0623
Application No. 10/181,859

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APPEALED SUBJECT MATTER
The appellant “elects to have claims 11-14, 16, 17, 19 and
20 treated as a single group.” See the Brief, page 4. The
appellant does not argue the separate patentability of the
individual claims on appeal. See the Brief in its entirety.
Thus, for purposes of this appeal, we select claim 11 from all
the claims on appeal and decide the propriety of the examiner’s
Section 103 rejection set forth in the Answer based on this claim
alone in accordance with 37 CFR § 41.37(c)(1)(vii)(2004). Claim
11 is reproduced below:
11. A method for improving the control of the soot induced
viscosity increase of diesel engine lubricant compositions
as they age[,] said compositions comprising a major amount
of a base stock and a minor amount of a dispersant by
incorporating into said diesel engine lubricant compositions
an effective amount of an antioxidant combination
characterized in that the antioxidant comprises an oil
soluble trinuclear organomolybdenum compound of the generic
formula:
Mo S -(Q) (I) 3 x
wherein x is from 4 to 10, and Q is a core group, which may
be a ligand, and at least one other antioxidant compound
selected from an aminic compound.

PRIOR ART
The prior art references relied upon by the examiner in
support of the Section 103 rejection before us are:
Fang et al. (Fang) 5,837,657 Nov. 17, 1998
Appeal No. 2006-0623
Application No. 10/181,859

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Gao et al. (Gao) 6,734,150 B2 May 11, 2004
(Filed Nov. 12, 2002)

Smalheer et al., Lubricant Additives, The Lezius-Hiles Co.,
Cleveland, Ohio, pp. 1-11 (1967) (hereinafter referred to as
“Smalheer”).

REJECTION

Claims 11 through 14, 16, 17, 19 and 20 stand rejected under
35 U.S.C. § 103 as unpatentable over the combined disclosures of
Fang and Smalheer. Claims 11 through 14, 16, 17, 19 and 20 under
the judicially created doctrine of obviousness-type double
patenting as unpatentable over claims 8 and 9 of U.S. Patent
6,734,150 B2 issued to Gao on May 11, 2004.
DISCUSSION
We have carefully reviewed the claims, specification and
prior art, including all of the evidence and arguments advanced
by both the examiner and the appellant in support of their
respective positions. This review has led us to conclude that
the examiner’s Section 103 rejection and obviousness-type double
patenting rejection are well founded. Accordingly, we affirm the
examiner’s Section 103 rejection and obviousness-type double
patenting rejection for essentially the factual findings and
conclusions set forth in the Answer and below.
Appeal No. 2006-0623
Application No. 10/181,859

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The examiner finds (the Answer, page 3), and the appellant
does not dispute (the Brief, pages 5-8), that Fang teaches
a method for improving the performance of a sooted
diesel oil and to control soot-induced viscosity increase by
adding to a major amount of diesel oil a minor amount of a
composition comprising at least one compound of the formula
Mo3SkLnOz and mixtures thereof, wherein the L are
independently selected ligands having organo groups with a
sufficient number of carbon atoms to render the compound
soluble or disperible in the oil, n is from 1 to 4, k varies
from 4-10, Q is selected from electron donating compounds
and z ranges from 0 to 5. See column 1, lines 5-9 and lines
55-65. Fang teaches that the base oil may be selected from
any of the diesel lubricating oils including light diesel to
heavy duty diesel oils. The examiner is of the position
that the molybdenum compound disclosed in Fang meets the
limitations of the claimed compound when z (thus Q) is zero.

Rather, the appellant appears to argue that Fang and Smalheer
would not have suggested employing the claimed additional
antioxidant, i.e., an aminic compound, in a “method for improving
the control of the soot induced viscosity increase of diesel
engine lubricant compositions...” See the Brief, pages 5-8. We
do not agree.
As indicated supra, Fang teaches “a method for improving the
performance of a sooted diesel oil and controlling soot induced
viscosity increase and wear by adding to a major amount of a
diesel oil [base stock] a minor amount of a composition
comprising [the claimed oil soluble and dispersible trinuclear
organomolybdenum compound]”. See also column 1, line 55 to
Appeal No. 2006-0623
Application No. 10/181,859

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column 2, line 3 and column 4, line 61 to column 5, line 27. As
also correctly found by the examiner (the Answer, page 3),
Fang teaches that other known lubricant additives may
be compatible with the invention and can be present in
the diesel oil being treated. These additives include
dispersants and antioxidants. See column 5, lines
62-67.

Although Fang does not mention specific antioxidants, the
examiner correctly finds that Smalheer teaches that “phenolic and
amine antioxidants are well-known in the lubricant art.” See the
Answer, page 3, together with Smalheer, page 7. Specifically,
Smalheer teaches that some of these phenolic and amine
antioxidants are considered “those older products which have
stood the test of time and competition in the additive industry.”
See page 7.
Given the above teachings, we concur with the examiner that
one of ordinary skill in the art would have been led to add the
proven antioxidant additive taught by Smalheer in the lubricant
composition used in Fang’s method, motivated by a reasonable
expectation of successfully inhibiting the oxidation of the
lubricant composition. Thus, we determine that the examiner has
established a prima facie case of obviousness regarding the
claimed subject matter within the meaning of 35 U.S.C. 103.
Appeal No. 2006-0623
Application No. 10/181,859

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As a rebuttal to the prima facie case established by the
examiner, the appellant argues that “an aminic antioxidant in
addition to a trinuclear molybdenum compound to an oil
formulation containing a dispersant will result in an
unexpectedly greater degree of control of such soot induced
viscosity increase as compared to the addition of a phenolic
antioxidant in addition to a trinuclear molybdenum composition to
the same oil formulation (emphasis original).” See the Brief,
pages 6-7. In support of this argument, the appellant refers to
the relative viscosities of test oils formulations O, P, M and N
tabulated in Tables 4, 5 and 6 at pages 10 through 12 of the
specification. Id. Tables 4, 5 and 6 show that the employment
of either oxtylated/butylated diphenylamine or an alkylated
phenyl-alpha-naphthylamine, as opposed to “a high molecular
weight phenolic antioxidant” in the exemplified test oil
formulations imparts an improved relative viscosities from 1.20
to 1.19 and from 1.30 to 1.26 or 1.24, respectively. Having
reviewed the showing in the specification, we determine that the
appellant has not demonstrated that the claimed subject matter as
a whole imparts unexpected results. In re Klosak, 455 F.2d 1077,
1080, 173 USPQ 14, 16 (CCPA 1972)(The appellant has the burden of
Appeal No. 2006-0623
Application No. 10/181,859

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showing that the claimed subject matter imparts unexpected
results.); In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697
(CCPA 1966)(“It was incumbent upon appellants to submit clear and
convincing evidence to support their allegation of unexpected
property.”).
First, as correctly pointed out by the examiner (the Answer,
page 12), the appellant has not demonstrated that the showing in
the specification is commensurate in scope with the degree of
protection sought by the claims on appeal. See In re Kulling,
897 F.2d 1147, 1149-50, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990);
In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir.
1983); In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289,
295-96 (CCPA 1980). The appellant has not evinced that the vast
number of aminic compounds recited in the claims on appeal would
behave in the same manner as the two specific aminic compounds
containing phenyl and amine used in test oil formulations. In
other words, the appellant fails to show that the data relied
upon are indicative of the relative viscosities which would be
obtained when the materially different aminic compounds covered
by the claims on appeal are employed.
Second, as again pointed out by the examiner (Answer, page
5), the appellant has not demonstrated the alleged improvements
Appeal No. 2006-0623
Application No. 10/181,859

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resulting from employing either oxtylated/butylated diphenylamine
or an alkylated phenyl-alpha-naphthylamine in test oil
formulations are unexpected. In re Freeman, 474 F.2d 1318, 1324,
177 USPQ 139, 143 (CCPA 1973); Klosak, 455 F.2d at 1080, 173 USPQ
at 16. The appellant has not evinced that the alleged
improvements are not within the margin of error in the tests
employed in the specification. Indeed, nowhere does the
appellant aver that the alleged improvements are unexpected by
one of ordinary skill in the art. In re Geisler, 116 F.3d 1465,
1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). The only allegation
of unexpected results is from the appellant’s counsel. Thus, it
cannot be said that the appellant has carried the burden of
showing that the claimed subject matter as a whole imparts
unexpected results, thereby rebutting the prima facie case
established by the examiner.
Based on the totality of record, including due consideration
of the appellant’s arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of Section 103(a). Accordingly,
we affirm the examiner’s decision rejecting claims 11 through 14,
16, 17, 19 and 20 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Fang and Smalheer.
Appeal No. 2006-0623
Application No. 10/181,859

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With respect to the obviousness-type double patenting
rejection, the appellant states (the Brief, page 8) that:
The Examiner’s rejection of the claims under the
judicially created doctrine of obviousness-type double
patenting over method claims 8 and 9 of USP 6,734,150 is no
longer contested.

Thus, we summarily affirm the examiner’s decision rejecting
claims 11 through 14, 16, 17, 19 and 20 under the judicially
created doctrine of obviousness-type double patenting as
unpatentable over claims 8 and 9 of U.S. Patent 6,734,150 B2
issued to Gao on May 11, 2004.
CONCLUSION
In view of the foregoing, the decision of the examiner is
affirmed.
Appeal No. 2006-0623
Application No. 10/181,859

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

AFFIRMED

CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

CKP/TF

Appeal No. 2006-0623
Application No. 10/181,859

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