Ex Parte Khan

Patent Trial and Appeal Board

Dec 31, 2015

12872109 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/872,109 08/31/2010 Raquib Uddin Khan
105639 7590 01/04/2016
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10-14957-00 2955
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAILDATE DELIVERY MODE
01/04/2016 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 RAQUIB UDDIN KHAN
Appeal 2014-002112
Application 12/872,109 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision finally rejecting claims 1-27. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellant, the real party in interest is Seagate Technology
LLC. App. Br. 3.
2 Our decision refers to Appellant's Specification filed August 31, 2010,
Appellant's Appeal Brief (App. Br.) filed September 24, 2013, the
Examiner's Answer (Ans.) mailed November 7, 2013, and Appellant's
Reply Brief (Reply Br.) filed December 17, 2013.
Appeal 2014-002112
Application 12/872,109
STATEMENT OF THE CASE
The invention relates to hydrodynamic disc drive spindle motors
having hydro bearings with a lubricating fluid including a synthetic ester
base fluid with a viscosity index of at least 110, from 0.01-5 wt% of at least
one tri-C6-C 14-aryl phosphate whose aryl groups have from 1 to 3 identical
or different substituents selected from C1-C1ralkyl groups, and from 0.01-5
wt% of at least one carbodiimide. Spec. i-f 1.
Claim 1, reproduced below from the Claims Appendix to Appellant's
Appeal Brief, is illustrative of the subject matter on appeal:
1. A spindle motor comprising:
a stationary member;
a rotatable member which is rotatable with respect to the
stationary member; and
a hydro bearing interconnecting the stationary member
and the rotatable member and having working surfaces
separated by a lubricating fluid, wherein the lubricating fluid
comprises:
a) a synthetic ester base fluid having a viscosity
index of at least 11 O;
b) from 0.01 % to 5% by weight, based on the total
weight of the lubricating fluid, of at least one tri-C6-C14-
aryl phosphate wherein each of the aryl groups has from
1 to 3 identical or different substituents selected from C1-
C1ralkyl groups; and
c) from 0.01 % to 5% by weight, based on the total
weight of the lubricating fluid, of at least one
carbodiimide.
The Rejections
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
I. Claims 1-10, 12-18, 20-24, 26, and 27 as unpatentable over
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Hirata3 in view of Kamimura4 and Nadasdi; 5
II. Claim 11 as unpatentable over the combination of Hirata,
Kamimura, and N adasdi, further in view of Khan; 6
III. Claim 25 as unpatentable over the combination of Hirata,
Kamimura, and N adasdi, further in view of Diaz; 7
IV. Claims 1-10, 12-24, 26, and 27 as unpatentable over Hirata
in view of Kawahara8 and Nadasdi;
V. Claim 11 as unpatentable over the combination of Hirata,
Kawahara, and Nadasdi, further in view of Khan; and
VI. Claim 25 as unpatentable over the combination of Hirata,
Kawahara, and Nadasdi, further in view of Diaz.
Appellant presents separate arguments as to each of the above
rejections. In addition, Appellant separately argues the following claim
groupings: claims 6 and 27; claims 12 and 22; and claim 26. Appellant
does not otherwise separately argue the remaining claims of rejections I and
IV. As such, we select claim 1 to address Appellant's arguments with regard
to these two rejections, in addition to the separately argued groupings above.
3 US 2006/0008189 Al, published January 12, 2006 (hereinafter "Hirata").
4 US 2006/0199747 Al, published September 7, 2006 (hereinafter
"Kamimura").
5 US 6,235,687 Bl, issued May 22, 2001 (hereinafter "Nadasdi").
6 US 2008/0024919 Al, published January 31, 2008.
7 US 5,744,431, issued April 28, 1998 (hereinafter "Diaz").
8 US 2006/0019840 Al, published January 26, 2006 (hereinafter
"Kawahara").
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ANALYSIS
Rejection I: Obviousness over Hirata, Kamimura, and Nadasdi
Claim 1
We sustain this rejection based on the findings of fact, conclusions of
law, and rebuttals to arguments well expressed by the Examiner in the Final
Office Action and the Answer. The following comments are added for
emphasis.
The Examiner combined Hirata's synthetic ester base fluid lubricant
with Kamimura's tri-C6-C 14-aryl phosphate as a known friction modifier on
the basis that Hirata suggests the addition of friction modifiers to the base
fluid lubricant for a spindle motor. Ans. 2--4. In addition, the Examiner
combined Hirata's base fluid with Nadasdi's carbodiimide as a known acid
scavenger on the basis that Nadasdi teaches the addition of acid scavengers
along with an acidic anti-rust additive and Hirata suggests the addition of
anti-rust additives to the base fluid iubricant. Id. at 4--5.
Appellant contends that the Examiner erred in the above proposed
combination of Hirata with Kamimura and Nadasdi for a number of reasons:
1) that the combination is based on impermissible hindsight; 2) that
Kamimura teaches away from an ester base oil with phosphate additives;
3) that Hirata and Nadasdi are incompatible in combination; and 4) that
combining Nadasdi with Hirata frustrates the purpose of the carbodiimide in
the lubricant of the claims. See generally, App. Br. 14--17.
In particular, Appellant argues that
[ t ]he Examiner has not identified a nexus between Hirata,
Kamimura, and Nadasdi that would motivate ... [an ordinary
artisan] to selectively cull a particular ester base oil and a
particular subset of additives from the myriad base oil-additive
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combinations of Hirata, Kamimura, and Nadasdi to arrive at the
claimed lubricating fluid with a reasonable expectation of
success.
Id. at 14--15. Appellant asserts that Hirata discloses a variety of possible
classes of additives to the base oil, but that the Examiner "selectively culls"
two classes of additives, friction modifiers and corrosion inhibitors, from
Hirata to modify the base oil with the teachings of Kamimura and N adasdi
without an explanation for why an ordinary artisan would be motivated to do
the same. Reply Br. 5. Appellant argues that such "selective culling ... is
on the basis of the claimed subject matter, not on the basis of facts gleaned
from Hirata and/or any other references or reasons of record." Id.
Appellant further argues that the claimed tri-C6-C 14-aryl phosphates
are a sub-genus of the class of friction modifiers, which is itself a sub-genus
of Hirata's very broad class of additives. Id. at 6. In addition, Appellant
argues that Nadasdi's acid scavenger is not an express class of additives in
Hirata. Id.
Appellant's arguments are not persuasive of reversible error.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Although Appellant
argues that the Examiner has not provided an explanation for why one of
ordinary skill in the art would have selected the specific additives of
Kamimura and Nadasdi to include in Hirata's base fluid lubricant, we
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disagree. The Examiner found Hirata discloses that the base fluid lubricant
"can include friction modifiers and extreme pressure agents, but does not
disclose specific suitable friction modifiers and extreme pressure agents."
Ans. 3. The Examiner also found Hirata discloses that the base fluid
lubricant "can comprise corrosion inhibitors, but does not disclose specific
suitable corrosion inhibitors." Id. That Hirata teaches a number of other
possible functional classes of additives that may be added to the base fluid
lubricant does not render any particular class of additives unobvious.
"Disclos[ ure of] a multitude of effective combinations does not render any
particular formulation less obvious." Merck & Co. Inc. v. Biocraft Labs.
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Moreover, in disclosing classes of functional additives, without
disclosing specific species of those additives, one of ordinary skill in the art
would have recognized that Hirata was suggesting that any of the known
species of each functionai class couid be added to the base fluid iubricant
with a reasonable expectation of success. Here, Kamimura teaches a sub-
genus of friction modifiers, a functional class of additives specifically taught
in Hirata, including the recited tri-C6-C14 aryl phosphate. The nexus
between Kamimura's friction modifier and Hirata is Hirata's teaching that
any known friction modifier may be added to the base fluid lubricant.
Likewise, Nadasdi teaches a sub-genus of corrosion inhibitors, a
functional class of additives specifically taught in Hirata, including acidic
anti-rust additives, which are combined with acid scavengers such as the
recited carbodiimide to provide enhanced stability. The nexus between
Nadasdi's acid scavenger and Hirata is Hirata's teaching that any known
corrosion inhibitor may be added to the base fluid lubricant and Nadasdi's
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teaching that acid scavengers enhance the stability of lubricant's having
acidic anti-rust additives. Thus, the Examiner's combination of Hirata,
Kamimura, and Nadasdi, takes into account only knowledge from these
references. Appellant has not shown that the combination includes
knowledge gleaned only from Appellant's disclosure.
Appellant's next argument is that Kamimura teaches away from an
ester base oil with phosphate additive. App. Br. 15. Appellant argues that
there are limitless degrees of freedom with respect to base oil-additive
combinations of Kamimura, none of which can be at once envisaged. Id.
Further, Appellant urges that "[b ]ecause Kamimura specifically discloses
dioctyl sebacate without a phosphate additive amid myriad base oil-additive
combinations that cannot be at once envisaged, Kamimura teaches away
from using a phosphate additive with an ester base oil." Id. at 16. Appellant
additionally contends that
it is improbabie that the [ordinary artisan], with Hirata and
Kamimura in hand, and without the luxury of hindsight, would
select an ester base oil from Hirata and a phosphate-based sub-
genus of friction modifiers from Kamimura in view of at least
the express preference for ether base oils of Kamimura, not to
mention the myriad friction modifiers from which the [ordinary
artisan] optionally could choose.
Reply Br. 7.
We do not find Appellant's argument persuasive of reversible error.
"A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta Computer
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Application 12/872,109
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d
977, 990 (Fed. Cir. 2006)). A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not "criticize, discredit, or otherwise discourage" investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Indeed, the expressed preference for certain embodiments within a disclosed
genus does not teach away from the rest of the embodiments within the
genus. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
Here, Appellant's argument relies on the fact that Kamimura
expressed a preference for ether-based, rather than ester-based oil, as the
base fluid lubricant and that Kamimura's disclosure of an example lubricant
of dioctyl sebacate does not include the phosphate additive. Neither of these
facts, however, supports Appellant's "teaching away" argument. Appellant
has not shown that Kamimura criticizes, discredits, or otherwise discourages
the combination of Hirata and Kamimura proposed by the Examiner.
Further, Appellant's argument that there is a myriad of different
possible combinations of base fluid lubricants and additives within the prior
art, none of which that can be at once envisaged, expresses an improper
standard for obviousness. Whether one of ordinary skill in the art would
have at once envisaged a particular combination or not applies to a question
as to whether a prior art reference anticipates the particular combination. In
re Petering, 301F.2d676, 681---682 (CCPA 1962) (A disclosure that allows
one skilled in the art to "at once envisage each member of [a] limited class"
describes each member of the class "as if [the reference] had drawn each
structural formula or had written each name.") Such is not the consideration
here, as the Examiner has not found that the ordinary artisan would have at
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once envisaged each member of the classes of Kamimura's fluid lubricant
and friction modifier combinations. Instead, the Examiner determined that
one of ordinary skill in the art would have found it obvious to have used the
known friction modifier, tri-C6-C14-aryl phosphate, of Kamimura as the
friction modifier suggested as an additive to the ester base fluid lubricant of
Hirata with a reasonable expectation of success. Appellant fails to argue and
present evidence that such a combination provides unexpected results.
Turning to Appellant's third argument that Hirata and Nadasdi are
incompatible, Appellant contends that the ordinary artisan would not have
been motivated to include the carbodiimide acid scavenger and the anti-rust
agent ofNadasdi in the lubricant of Hirata. App. Br. 16. In particular,
Appellant argues that Nadasdi's anti-rust agent can be any acidic anti-rust
additive such as carboxylic acid or carboxylic acid-producing compounds,
whereas Hirata recognizes a problem with corrosion by unreacted carboxylic
acids from ester synthesis. Id. Appeiiant asserts that Nadasdi's
carbodiimide acid scavenger/anti-rust agent combination would increase the
concentration of carboxylic acids thereby frustrating Hirata's teachings. Id.
This argument also fails to persuade us of reversible error in the
Examiner's rejection. As the Examiner found (Ans. 15), Nadasdi's
carbodiimide acid scavenger/anti-rust agent combination addresses the
problem created by the acidic nature of the anti-rust additive through the
acid scavenger, thereby stabilizing the resulting lubricant. Hirata is not
frustrated by the addition ofNadasdi's combination, as Hirata provides
materials for the motor shaft that do not corrode due to acidic non-reactants
from the ester synthesis, and Nadasdi's acid scavenger would ameliorate any
corrosive effect of the acidic anti-rust additive. Appellant fails to direct our
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attention to any evidence that Hirata's solution to the problem of acidic non-
reactants from the ester synthesis is in any way incompatible with Nadasdi's
carbodiimide acid scavenger/acidic anti-rust additive.
Appellant's fourth argument against the Examiner's obviousness
rejection of claim 1 contends that the use ofNadasdi's combination would
frustrate the purpose for the carbodiimide. App. Br. 17. Appellants note
that the purpose of the carbodiimide in the claimed invention is to ''prevent,
suppress or sufficiently inhibit hydrolytic deterioration of the constituents of
the lubricating fluid." Id. Appellant argues that Nadasdi's combination
would increase the concentration of carboxylic acids in the claimed
lubricating fluid, and therefore would increase acid-catalyzed hydrolysis of
the ester base oil of the lubricant. Id. (see also Reply Br. 9--10). As such,
Appellant urges that Appellant's purpose for the carbodiimide thereby is
frustrated. App. Br. 17.
We do not agree. "[A ]ny need or probiem known in the fieid of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). "[T]he motivation in the prior art to
combine the references does not have to be identical to that of the applicant
to establish obviousness." In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996). "As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor."
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
Here, the Examiner found a suggestion in N adasdi for using the
carbodiimide: as part of a two part additive including an anti-rust agent to
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Application 12/872,109
provide anti-rust functionality while also stabilizing the lubricant containing
the acidic anti-rust agent with the carbodiimide as an acid scavenger.
Appellant has not shown that Nadasdi's combination would increase acid-
catalyzed hydrolysis of the ester base oil of Hirata, much less increase acid-
based corrosion of Hirata's bearing units. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (Attorney argument does not suffice where an
evidentiary showing is required.)
Accordingly, for the reasons given above and in the Answer, we will
sustain the Examiner's obviousness rejection of claim 1 over the
combination of Hirata, Kamimura, and Nadasdi.
Claims 6 and 2 7
Claim 6 depends from claim 1, and further requires that the viscosity
of the lubricating fluid is from 15-80 cp at 0°C. Claim 27 depends from
claim 21, and further requires that the lubricating fluid functions to
substantiaiiy inhibit the formation of viscosity-increasing geL
Appellant argues these claims together, contending that the Examiner
used impermissible hindsight in concluding these limitations would have
been obvious over the Hirata, Kamimura, and Nadasdi combination. App.
Br. 18 (see also, Reply Brief 10-11 ). Appellant also argues that, in rejecting
these claims, the Examiner relied on the theory of inherency, but failed to
provide a basis in fact and/or technical reasoning to reasonably support the
inherency of these limitations on the lubricating fluid. App. Br. 18.
Appellant notes that none of the references disclose a dynamic viscosity or
gel-formation inhibiting properties. Id.
We are not persuaded that the Examiner reversibly erred in rejecting
these claims. To begin, as the Examiner found (Ans. 5 and 16), the
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combination of Hirata, Kamimura, and Nadasdi provides essentially the
same lubricant fluid as the claimed lubricant fluid. Appellant fails to direct
our attention to any disclosure to a particular component of the lubricating
fluid that provides either the viscosity limitation or the gel formation
inhibition property, nor do we find any. Also, Appellant does not contend
that the prior art combination, including the same lubricant components as
recited in the claims, would not have either the recited viscosity or the
recited gel formation inhibition. Moreover, we note Hirata discloses not
only that low viscosity is an important property of the lubricant, but also that
it may be adjusted by the selection of the base ester, and also by the addition
of viscosity index improvers. Hirata i-fi-16, 11, 12, 15, 34, and 35. Absent
evidence to the contrary, we are unconvinced that the Examiner's proposed
combination would not necessarily provide a lubricating fluid with the
recited viscosity and gel formation inhibition properties, or that it would not
have been obvious to the ordinary artisan to have arrived at these properties
by routine experimentation given Hirata's disclosure.
Accordingly, we will sustain the Examiner's obviousness rejection of
claims 6 and 2 7.
Claims 12 and 22
Claim 12 depends indirectly from claim 1, and further requires that
the lubricating fluid includes from 0.01-5 wt% of at least one anti-foaming
agent. Claim 22 depends from claim 21, and similarly further requires that
the lubricating fluid includes from 0.01-5 wt% of at least one anti-foaming
agent.
The Examiner found that Kamimura teaches the addition of a
defoaming agent to the lubricating fluid. Ans. 5. Appellant argues that
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Hirata and Kamimura teach away from the amount of the anti-foaming agent
required in claims 12 and 22. App. Br. 18. In particular, Appellant urges
that Kamimura teaches away by teaching a lower range than that recited in
the claims. Id. Appellant also urges that Hirata teaches away by teaching
that the total amount of additive to be blended with the base ester oil must be
kept to a minimum. Id.
We do not find Appellant's arguments persuasive. It has been held
that, where the teaching of a reference range touches the range recited in a
claim, the claimed invention is rendered prima facie obvious over such a
teaching. In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997), citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Moreover, prima facie
obviousness has been found when the claimed range and the prior art range
do not overlap, but are close enough that one skilled in the art would have
expected them to have the same properties, shifting the burden to the
appiicant to show they are different. Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); Geisler, supra. Here, we note,
as did the Examiner (Ans. 17), that Kamimura's range and the claimed range
for the anti-foaming agent touch at the endpoint, 0.01 %. 9 Appellant does
9 We note Kamimura's range is based on mass%, whereas the claim recites
wt%. However, as both the Examiner and Appellant ignore this potential
distinction, we shall not address it further. Failure to argue this issue in the
Appeal Brief constitutes a waiver. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv). Cf In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior art."). See
also Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) ("Filing a Board
appeal does not, unto itself, entitle an appellant to de nova review of all
aspects of a rejection. If an appellant fails to present arguments on a
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not dispute this finding. In addition, we are not persuaded that Kamimura
teaches away merely because Kamimura's range is below the claimed range.
Kamimura does not discourage an amount of 0.01 %, nor does Kamimura
criticize, discredit, or otherwise disparage higher amounts of the anti-
foaming agent. Fulton, supra. Further, although Hirata teaches that the
amount of additives must be kept to a minimum, Hirata also does not
expressly discourage any particular amount of any of the additives per se.
Thus, Hirata also does not teach away from the claimed invention. As
Appellant has not shown that the claimed range is critical or provides
unexpected results, we find no error in the Examiner's obviousness rejection
of claims 12 and 22.
Claim 26
Claim 26 depends from claim 21, and further requires a corrosion
inhibitor in the amount from 0.01-5 wt%, selected from the group consisting
of carboxyiic acid derivatives, suifonates, imidazoiines, imidazoie
thia(dia)zoles, (benzo)triazoles, and hydrocarbyl amines, and amine
phosphates.
The Examiner found Nadasdi teaches that the anti-rust agent can be
various carboxylic acid derivatives. Ans. 17. Appellant argues that Nadasdi
teaches away from the corrosion inhibitors of claim 26. App. Br. 19. While
Appellant concedes that Nadasdi teaches carboxylic acid derivatives,
Appellant nonetheless contends that a person of ordinary skill in the art
would understand these derivatives to be precursors to the acidic anti-rust
particular issue - or, more broadly, on a particular rejection - the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.")
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agents present in the final composition. Id. Further, Appellant asserts that
"none of the corrosion inhibitors [of claim 26] are acidic as Nadasdi
teaches." Id.
We do not agree that Nadasdi teaches away from the corrosion
inhibitors of claim 26, in particular, the carboxylic acid derivatives.
Appellant concedes that Nadasdi teaches such derivatives. Further, contrary
to Appellant's argument, Nadasdi teaches that these derivatives are the
additive, not a precursor of the additive as Appellant contends. Nadasdi,
3 :34--36 ("included in the description of acidic anti rust additives are
carboxylic acids and carboxylic acid producing compounds" (emphasis
added)). Finally, we find no limitation in claim 26 restricting the derivatives
to non-acidic derivatives.
Accordingly, we will sustain the Examiner's obviousness rejection of
claim 26.
Rejection II: Obviousness of claim 11 over Hirata, Kamimura, Nadasdi,
and Khan
Claim 11 depends from claim 1, and further requires from 0.01-5
wt% of at least one pour point depressant. The Examiner found that Hirata
teaches that the lubricant may include a pour point depressant additive. Ans.
11. The Examiner further found Khan discloses the addition of a pour point
depressant in amounts of 0.2 % and 2.0 % to a lubricant. Id. at 12.
Therefore, the Examiner concluded it would have been obvious to have
provided a pour point depressant in Hirata's lubricant in an amount of either
0.2 % and 2.0 %, with a reasonable expectation of success. Id.
Appellant argues that the Examiner's rejection relies on impermissible
hindsight because there is a myriad of possible base oil-additive
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combinations within the applied prior art, and the Examiner has not provided
a nexus between these applied references that would motivate an ordinary
artisan to arrive at the claimed invention. App. Br. 20. To the extent that
this argument applies to the combination of Hirata, Kamimura, and Nadasdi,
we have not found it persuasive as discussed above. We note that Hirata
expressly suggests a pour point depressant but does not specify the amount.
We find a preponderance of the evidence supports the Examiner's
conclusion that the claimed amounts of this additive would have been
obvious in view of Khan. Again, Appellant has not shown that the
Examiner's combination relies on information gleaned only from
Appellant's disclosure.
We will sustain the Examiner's obviousness rejection of claim 11.
Rejection III: Obviousness of claim 25 over Hirata, Kamimura, Nadasdi,
and Diaz
Ciaim 2 5 depends from claim 21, and further requires from 0. 001---0. 5
wt% of at least one electrically conductive, non-metallic additive. The
Examiner found that Hirata teaches that the lubricant may include an anti-
static additive. Ans. 7. The Examiner further found Diaz discloses the
addition of anti-static additive to a lubricant in amounts within the range of
claim 25. Id. Therefore, the Examiner concluded it would have been
obvious to have provided an anti-static additive in Hirata's lubricant in an
amount within the range of claim 25, with a reasonable expectation of
success. Id.
Appellant argues that the Examiner's rejection relies on impermissible
hindsight because there is a myriad of possible base oil-additive
combinations within the applied prior art, and the Examiner has not provided
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a nexus between these applied references that would motivate an ordinary
artisan to arrive at the claimed invention. App. Br. 20-21. To the extent
that this argument applies to the combination of Hirata, Kamimura, and
Nadasdi, we have not found it persuasive as discussed above. We note that
Hirata expressly suggests an anti-static agent but does not specify the
amount. We find a preponderance of the evidence supports the Examiner's
conclusion that the claimed amounts of this additive would have been
obvious in view of Diaz. Again, Appellant has not shown that the
Examiner's combination relies on information gleaned only from
Appellant's disclosure.
Appellant also argues that Diaz's anti-static additive is added to non-
polar lubricants, whereas the Hirata' s ester base oil is polar. App. Br. 21.
However, as the Examiner noted (Ans. 18), Appellant has not provided any
evidence or technical reasoning as to why an ordinary artisan would expect
Diaz's anti-static agent wouid iose its functionaiity in an ester base oiL In
this regard, Appellant argues that "[i]n accordance with the well-known like-
dissolves-like aphorism, the polar lubricant additives may be suitable for the
polar base fluids, and the non-polar lubricant additives may be suitable for
the non-polar base fluids." Reply Br. 14. If true, this aphorism would seem
to support the Examiner's combination, as Diaz's anti-static agents are polar
and Hirata's ester base oil is asserted by Appellant to be polar. See Diaz
3:15-18, 5:31-33. Thus, given Appellant's argument, an ordinary artisan
would expect Diaz's anti-static agents to be particularly suitable for Hirata's
ester base oil.
Accordingly, we will sustain the Examiner's obviousness rejection of
claim 25.
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Rejections IV-VI: Obviousness over Hirata, Kawahara, and Nadasdi, alone
or further in view of Khan and Diaz
We note the Examiner's combination of these prior art references is
substantially the same as that set forth in the rejections above except
Kamimura is replaced with Kawahara for the teaching of the tri-C6-C14-aryl
phosphate friction modifier in an ester base lubricant. See Ans. 7-13. In
addition, we note Appellant's arguments raised against these rejections are
substantially a subset of those raised against rejections I-III. As we did not
find these arguments persuasive of reversible error for the reasons given
above and sustained the Examiner's rejections I-III, we likewise sustain the
Examiner's rejections IV-VI for the same reasons.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Answer, each of the § 103 rejections is sustained.
DECISION
The decision of the Examiner rejecting claims 1-27 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
bar
18