Ex Parte Habeeb et al

Patent Trial and Appeal Board

Jun 20, 2013

11527309 (P.T.A.B. Jun. 20, 2013)

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.
11/527,309 09/26/2006 Jacob J. Habeeb JJD-0619 4936
7590 06/20/2013
ExxonMobil Research and Engineering Company
P. O. Box 900
Annandale, NJ 08801-0900
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
06/20/2013 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 JACOB J. HABEEB and DOUGLAS E. JOHNSON
____________

Appeal 2012-003824
Application 11/527,309
Technology Center 1700
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek relief from the Examiner's final rejection of Claims 1,
3, and 5-15.
We AFFIRM.
Because our decision contains reasoning that differs from that
supplied by the Examiner in the Answer, we designate our affirmance of
Claims 1, 3, and 5-15 as a new ground of rejection pursuant to our authority
under 37 C.F.R. § 41.50(b).
Appeal 2012-003824
Application 11/527,309

2
Claim 1 is representative of the subject matter on appeal:
1. A lubricating composition having enhanced load carrying
properties comprising:

(a) a major amount of an oil of lubricating viscosity selected from the group
consisting of phosphate ester base oils and gas to liquid base oils, and

(b) an effective amount of antiwear and load-carrying additives selected
from the group consisting of (i) a combination of thiosalicylic acid and
adenine wherein the weight ratio of thiosalicylic acid to adenine is in the
range of 5: 1 to 50: 1 and (ii) said (i) combination including a phosphate
ester antiwear and load carrying additive.

The Examiner maintains the following grounds of rejection under 35
U.S.C. § 103(a), which we refer to by number in our analysis:
Rejection I: Claims 1, 3, 5-6, and 9-11 as unpatentable over Beltzer in
view of Wenderoth (Ans. 5);
Rejection II: Claims 1, 3, 5, 7-13, and 15 as unpatentable over Beltzer
in view of Wenderoth and Berlowitz (Ans. 6); and
Rejection III: Claims 6 and 14 as unpatentable over Beltzer in view
of Wenderoth, Berlowitz, and Shankwalker (Ans. 8).
No arguments in support of separate patentability are provided in
accordance with 37 C.F.R. § 41.37(c)(1)(vii), therefore, all claims subject to
each rejection stand or fall together. To the extent that arguments raised
against Rejections II and III are substantially identical to arguments raised
against Rejection I, our decision regarding Rejection I applies with equal
force to Rejections II and III.
Appeal 2012-003824
Application 11/527,309

3
We have considered each of Appellants’ arguments but none
persuades us of reversible error in the decision of the Examiner. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011).
Regarding Rejection I, the evidence supports the Examiner’s finding
that Beltzer discloses each limitation of Claim 1 but for the addition of
adenine and, accordingly, also the content of adenine in relation to
thiosalicylic acid (TSA). Ans. 5 (citing Beltzer 2:16-25, 48, 52-54 and
Example 1 (4:32-46)). As the Examiner points out, Beltzer optionally adds
other performance enhancing additives such as corrosion inhibitors to the
composition. Id. (citing Beltzer 4:15-16). The Examiner finds that
Wenderoth discloses a “corrosion inhibitor [that] can include adenine[.]” Id.
(citing Wenderoth [0001]-[0003], [0015]). Appellants acknowledge that
adenine is in fact a supplemental corrosion inhibitor in Wenderoth’s brake
fluid. App. Br. 9. Therefore, we find no error in the Examiner’s conclusion
that a person of ordinary skill in the art would have been prompted to add
known corrosion inhibitors including adenine to Beltzer’s composition in
accordance with Beltzer’s explicit teaching that corrosion inhibitors may be
added. As to the claimed TSA:adenine weight ratio, a person of ordinary
skill in the art would have found it obvious to arrive at an optimum or
workable range of amounts through routine experimentation. In re Aller,
220 F.2d 454, 456 (CCPA 1955).
Appellants observe that Beltzer in Example 1 discloses “a polyolester
base stock” that differs from the “phosphate ester” or “gas-to-liquid base oil”
specified in Claim 1. App. Br. 9. Appellants’ observation in that regard is
ineffective because Beltzer elsewhere discloses essentially the same base
Appeal 2012-003824
Application 11/527,309

4
oils specified in Claim 1. Ans. 5 (“Beltzer discloses that the base oils can be
phosphate esters . . . or Fischer-Tropsch base oils, which are gas to liquid
base oils”) (citing Beltzer 2:48, 52-54).
Appellants further argue that “[t]here is absolutely nothing in
Wenderoth to suggest that one of his exceedingly long lists of corrosion
inhibitors would be effective in enhancing the load-carrying ability of a
phosphate ester base oil or a gas-to-liquid base if combined with TSA in a
specified ratio.” App. Br. 9; see Wenderoth [0015] (list of corrosion
inhibitors). The inclusion of adenine in a list of corrosion inhibitors does not
render the use of adenine any less obvious for that disclosed purpose. In re
Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985); see
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.”).
To the extent that Appellants argue that the claimed invention
produces unexpected results over the prior art, we agree with the Examiner
that this argument is unconvincing because Appellants come forward with
no evidence of unexpected results commensurate in scope with the claims.
Ans. 10 (first full paragraph).
On this record, the evidence supports the Examiner’s conclusion that
selecting adenine as the corrosion inhibitor in Beltzer’s composition (which
may contain “additives such as corrosion inhibitors” (Beltzer 4:14-16))
would have required nothing more than an exercise of ordinary skill in
selecting a known component (adenine) to serve its ordinary function
(corrosion inhibition) in a lubricating oil composition. Ans. 6.
Appeal 2012-003824
Application 11/527,309

5
We have considered Appellants’ other arguments as to Rejection I but
find them unconvincing for the reasons stated by the Examiner.
Our above analysis regarding Rejection I applies with equal force to
Rejections II and III. Moreover, regarding Rejection III, the Examiner finds
that “Shankwalker discloses that the antiwear agent can be prepared from
Bisphenol A, forming a Bisphenal A diphosphate meeting the limitations of
[C]laims 6 and 14.” Ans. 8 (citing Shankwalker 3:4-6). Appellants respond
that Shankwalker in Example 1 does not use a diphosphate of Bisphenol A
and, thus, fails to demonstrate the effectiveness of that compound “as an
antiwear additive[.]” App. Br. 10. For the reasons well-stated in the
Answer, we agree with the Examiner that Appellants’ argument in this
regard lacks merit. Ans. 10-11 (bridging paragraph). In particular, the fact
that Shankwalker in Example 1 employs a different basestock does not
overcome the fact that Shankwalker elsewhere discloses that “[B]isphenol A
diphosphate is useful in a phosphate ester basestock.” Ans. 10; see Ans. 8
(citing Shankwalker 3:4-6).
We affirm the rejections of Claims 1, 3, and 5-15.
This decision contains a new ground of rejection with respect to
Claims 1, 3, and 5-15 pursuant to 37 C.F.R. § 41.50(b), which provides that
“[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” That section also provides that the
Appellants, 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:
Appeal 2012-003824
Application 11/527,309

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(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 . . . .

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

AFFIRMED 37 C.F.R. § 41.50 (b)
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