Ex Parte Griffin et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201712482087 (P.T.A.B. Feb. 6, 2017) 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. 12/482,087 06/10/2009 Paul G. GRIFFIN 2009-17 (65342.US/2175.0) 6454 64091 7590 02/08/2017 AFTON CHEMICAL CORPORATION LUEDEKA NEELY GROUP P.O. BOX 1871 KNOXVTT.T.E, TN 37901 EXAMINER OLADAPO, TAIWO ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 02/08/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LNG.PATENT@gmail.com docketing @ luedeka.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL G. GRIFFIN, IAN A. BELL, JOHN T. LOPER, WILLIAM Y. LAM, and GREGORY H. GUINTHER Appeal 2015-006400 Application 12/482,087 Technology Center 1700 Before JEFFREY W. ABRAHAM, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 5—7, 9, 13, 14, 18, and 19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We cite to the Specification (“Spec.”) filed June 10, 2009, as amended Nov. 29, 2011; Final Office Action (“Final Act.”) dated Aug. 20, 2014; Appellants’ Appeal Brief (“Br.”) and the Examiner’s Answer (“Ans”). 2 Appellants identify Afton Chemical Corporation as the real party in interest. Br. 2. Appeal 2015-006400 Application 12/482,087 BACKGROUND The subject matter on appeal relates to lubricant compositions for internal combustion engines. Claim 1 is illustrative and reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A lubricant composition for reducing engine deposits, comprising: a) a base oil of lubricating viscosity; b) a molybdenum dithiocarbamate compound providing about 350 ppm to about 1000 ppm molybdenum metal by weight to the lubricant composition based on a total weight of the lubricant composition; c) from about 0.8 to about 2.0 wt.% based on a total weight of a lubricant composition of a reaction product of an alkyl-substituted dicarboxylic acid compound selected from the group consisting of alkyl-substituted dicarboxylic acids, alkyl- substituted dicarboxylic acid anhydrides, and mixtures thereof, and a basic salt of aminoguanidine, that provides an amount of alkyl bis-3-amino-1,2,4-triazole in the reaction product that is sufficient to reduce engine deposits according to a TEOST 33C test in the presence of (d) from about 0.2 to about 1.5 weight percent calcium phenate detergent based on a total weight of the lubricant composition, wherein the calcium phenate detergent has a total base number (TBN) ranging from about 60 to about 160 TBN; wherein the lubricant composition provides engine deposits according to the TEOST 33C test that are less than an amount of engine deposits in the absence of component (c) and component (d). 2 Appeal 2015-006400 Application 12/482,087 REJECTION3 Claims 1, 5—7, 9, 13, 14, 18, and 194 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gatto5 and Demange.6 DISCUSSION Consistent with the Examiner’s findings, Final Act. 3, Gatto discloses a lubricating oil which comprises 2,000 to 40,000 ppm calcium phenate and 50 to 1000 ppm molybdenum from a molybdenum compound which is substantially free of reactive sulfur. Gatto, Abstract. Recognizing that the claimed molybdenum dithiocarbamate is a sulfur-containing compound,7 the Examiner relied not on Gatto’s sulfur-free molybdenum compound but on Gatto’s separate disclosure of optional “additional antioxidants” to support the determination that it would have been obvious to add molybdenum dithiocarbamate to Gatto’s lubricating oil. Final Act. 3 (citing Gatto, col. 9, 11. 32—34). Appellants argue that “there is no suggestion to use a molybdenum dithiocarbamate compound” in Gatto’s lubricant composition, particularly where Gatto’s sole molybdenum source is taught to be substantially sulfur-free. Br. 12. Gatto provides at the relied-upon passage that “a supplemental antioxidant may be included in oils that are less oxidatively stable or in oils 3 Final Act. 3—6; Ans. 2. 4 Rejected claims 8 and 20 were canceled. Amendment dated Oct. 20, 2014. 5 US 6,174,842 Bl, issued Jan. 16, 2001 (“Gatto”). 6 US 4,981,603, issued Jan. 1, 1991 (“Demange”). 7 See Loper Declaration, dated June 18, 2014, at 12 (“Typically, molybdenum dithiocarbamate compounds have from 4.5 to 28.6 wt.% sulfur and have a S/Mo molar ratio of 2.4 to 3.”). 3 Appeal 2015-006400 Application 12/482,087 that are subjected to unusually severe conditions.” Gatto, col. 9,11. 41 44. Listed supplemental antioxidants include, inter alia, “dialkyl dithiocarbamates.” Id. at 11. 36—39. The Examiner reasoned that Gatto therefore “envisages use of conventional molybdenum based dithiocarbamates .... Or, at least, it would have been obvious for persons of ordinary skill in the art at the time of the invention to have used conventional molybdenum dialkydithiocarbamate antioxidants as supplemental antioxidants of Gatto . . . .” Final Act. 3. Absent from the Examiner’s articulated reasoning is any evidence to support the finding that molybdenum dithiocarbamates were known antioxidant compounds useful in lubricating oil. Nor does the Examiner present evidence sufficient to support a finding that one skilled in the art would have had reason to particularly select a molybdenum dithiocarbamate from Gatto’s generic mention of dithiocarbamates as a supplemental antioxidant, particularly in light of Gatto’s requirement that the only disclosed molybdenum component of the lubricating oil be substantially free of reactive sulfur. The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[Rjejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be 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). On this record, we are persuaded that the Examiner has not set forth a factual basis which is sufficient to support a prima facie determination that it would have been obvious to select molybdenum dithiocarbamate for use as Gatto’s 4 Appeal 2015-006400 Application 12/482,087 disclosed supplemental antioxidant. Accordingly, we cannot sustain the Rejection. DECISION The Examiner’s decision rejecting claims 1, 5—7, 9, 13, 14, 18, and 19 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation