Ex parte KITANAKA

Board of Patent Appeals and Interferences

Jul 24, 1998

07980637 (B.P.A.I. Jul. 24, 1998)

Application for patent filed November 24, 1992.1
1
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(2) is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASANOBU KITANAKA
__________
Appeal No. 95-2657
Application 07/980,6371
__________
HEARD: Jul. 16, 1998
__________
Before KIMLIN, GARRIS, and WALTZ, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 2 through 7 as amended subsequent to
Appeal No. 95-2657
Application No. 07/980,637
2
the final rejection. These are all of the claims remaining in
the application.
The subject matter on appeal relates to a method for the
lubrication of an automatic transmission of a motor car with a
fluid comprising an overbasic oil-soluble metal salt and a
compound derived from a polyolefin having a molecular weight
of 300 to 3000, said compound having a long-chain alkyl group
and an amino group in the same molecular structure. Further
details of this appealed subject matter are apparent from a
review of independent claim 2 which reads as follows:
2. A method for the lubrication of an automatic
transmission of a motorcar which comprises lubricating the
automatic transmission with an automatic transmission fluid
comprising, on the basis of the total amount of composition,
as essential components, 0.01 to 20% by weight of an overbasic
oil-soluble metal salt (a) prepared by use of an alkaline-
earth metal borate, and 0.01 to 15% by weight of a compound
(b) derived from a polyolefin having a molecular weight of 300
to 3000, said compound (b) having a long-chain alkyl group and
an amino group in the same molecular structure selected from
the group consisting of succinimide and derivatives thereof,
benzylamine, polyalkylamine, and polyoxyalkylane aminoamide,
the balance being lubricating base oil.
The reference relied upon by the examiner as evidence of
obviousness is:
Inoue et al. 0,447,916 Sep. 25, 1991
(Inoue) (EP)
Appeal No. 95-2657
Application No. 07/980,637
3
The claims on appeal are rejected under 35 U.S.C. § 103
as being unpatentable over Inoue.
We refer to the brief and the reply brief and to the
answer for a complete exposition of the opposing viewpoints
expressed by the appellant and the examiner concerning the
above noted rejection.
OPINION
For the reasons set forth below, we cannot sustain the
examiner's rejection.
The issue we consider pivotal to this appeal and the
examiner's position with respect thereto are expressed by the
examiner on page 4 of the answer as follows:
Appellants [sic] argue that the instant claims
are drawn to a method for lubricating an automatic
transmission which differs from the prior art which
does not mention such a use. This is not deemed to
be persuasive since the composition of the prior art
is taught as an engine oil suitable for use in
gasoline engines, diesel engines and the like.
Appellants [sic] method of use as an automatic
transmission fluid is not seen to be patentably
distinct over the engine oil composition of the
prior art.
We do not share the examiner's above noted position.
Even assuming the composition of Inoue corresponds to the
composition recited in the appealed claims, we find nothing in
Appeal No. 95-2657
Application No. 07/980,637
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the here applied reference (and the examiner points to nothing
specifically) which would have suggested using the engine
lubricating oil composition thereof as an automatic
transmission lubricating fluid in accordance with the
appellant's claims. Stated otherwise, the examiner has
proffered no probative basis and we perceive none
independently which supports her aforequoted conclusion that
the here claimed method for lubricating an automatic
transmission "is not seen to be patentably distinct over the
engine oil composition of [Inoue]".
In light of the foregoing, we cannot sustain the
examiner's section 103 rejection of claims 2 through 7 as
being unpatentable over Inoue.
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Appeal No. 95-2657
Application No. 07/980,637
5
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )
Appeal No. 95-2657
Application No. 07/980,637
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