Ex Parte Koganei et al

Board of Patent Appeals and Interferences

Apr 16, 2002

08987404 (B.P.A.I. Apr. 16, 2002)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte KATSUYA KOGANEI
and
MAKOTE KANBARA

Appeal No. 2000-1447
Application No. 08/987,404

ON BRIEF

Before KIMLIN, LIEBERMAN and JEFFREY T. SMITH, Administrative
Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
and 3-8, all the claims remaining in the present application.
Claim 1 is illustrative:
1. A lubricating oil composition for internal combustion
engines, said composition comprising an ester-blended base stock,
an organomolybdenum compound and a zinc dithiophosphate, wherein
said ester-blended base stock comprises:
Appeal No. 2000-1447
Application No. 08/987,404
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from 10 wt.% to 30 wt.% based on the whole weight of the
base stock of an ester having a kinematic viscosity of from 8 cSt
to 35 cSt at 100°C and a saponification value of 200 mg-KOH/g or
lower; and
from 90 wt.% to 70 wt.% based on the whole weight of the
base stock of a poly(
-olefin) and/or a highly-refined mineral
oil having a sulfur content of 5 ppm or lower and an aromatic
hydrocarbon content of 1 wt.% or less.
The examiner relies upon the following references as
evidence of obviousness:
Seiki 4,968,452 Nov. 6, 1990
Culpon, Jr. (Culpon) 5,151,205 Sep. 29, 1992
Arai et al. (Arai) 5,364,545 Nov. 15, 1994
Appellants' claimed invention is directed to a lubricating
oil for internal combustion engines comprising a base stock
containing a poly(
-olefin) and/or highly-refined mineral oil
and an ester having the recited kinematic viscosity and saponi-
fication values. According to appellants, molybdenum-containing
oils, like those of the present invention, show extremely low
friction reducing effects when combined with ester-blended base
stocks (page 2 of specification, second paragraph). According to
appellants, they have found that use of an ester having the
claimed kinematic viscosity and saponification values "makes it
possible to fully exhibit the performance of a molybdenum-based
friction modifier" in a lubricating oil for internal combustion
engines (page 5 of specification, second paragraph). Appellants
Appeal No. 2000-1447
Application No. 08/987,404
1 The examiner's statement of the rejection in the Answer,
which includes only claims 1, 3-6 and 8, is considered
inadvertent error. We note that the Answer did not expressly
withdraw the final rejection of claim 7 under 35 U.S.C. § 103,
although the examiner's final rejection under 35 U.S.C. § 112,
first paragraph, is explicitly withdrawn (see page 3 of Answer).
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point to comparative data in the present specification which
demonstrates that ester oils having viscosity and saponification
values outside the claimed ranges "uniformly result in
lubricating oils which are markedly inferior in terms of friction
reduction over a wide temperature range" (page 6 of Brief, last
paragraph).
Appealed claims 1 and 3-8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Arai in view of Seiki and
Culpon.1
Upon careful consideration of the opposing arguments
presented on appeal, we find that the examiner has not
established a prima facie case of obviousness for the claimed
subject matter. Accordingly, we will not sustain the examiner's
rejection.
Arai, the primary reference, discloses a lubricating oil for
internal combustion engines comprising a base stock that may
comprise synthetic oils containing mixtures of polyolefin and
ester. However, Arai is silent on the saponification value of
Appeal No. 2000-1447
Application No. 08/987,404
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the ester and, as urged by appellants, the reference attaches no
significance to the saponification value and teaches no
correlation between the saponification value and friction
reduction. Although the examiner cites Seiki and Culpon for the
obviousness of using "a blended base oil stock having an ester
within the claimed 10 to 30 weight percent"
(page 6 of Answer, second paragraph), the examiner has not
offered a rationale why it would have been obvious for one of
ordinary skill in the art to select an ester having the claimed
saponification value for a lubricating oil comprising molybdenum
and dithiophosphate compounds. While the examiner points to
Culpon's disclosure of a C8 alcohol dimer acid ester and
concludes that it would inherently have a viscosity and
saponification value within the claimed range, the referenced
inclusion of such esters in a substantial list of ester oils
establishes only that it was known in the art to use a wide
variety of esters in oil compositions. Furthermore, Culpon is
directed to lubricants for chain and gear drive mechanisms but
makes no mention of internal combustion engines. Moreover,
appellants' comparative data in the specification demonstrates
that superior lubricants are obtained by using esters having the
claimed viscosity and saponification value.
Appeal No. 2000-1447
Application No. 08/987,404
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In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
PAUL LIEBERMAN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
ECK:clm
Appeal No. 2000-1447
Application No. 08/987,404
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Exxon Research and Engineering Co.
P.O. Box 390
Florham Park, NJ 07932-0390