Ex parte LAL

Board of Patent Appeals and Interferences

Mar 13, 2001

08472376 (B.P.A.I. Mar. 13, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.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 KASTURI LAL
_____________
Appeal No. 1998-1281
Application 08/472,376
______________
ON BRIEF
_______________
Before KIMLIN, JOHN D. SMITH and SPIEGEL, Administrative
Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
4, 6-36 and 38-40, all the claims remaining in the present
application. A copy of illustrative claim 1 is appended to
this decision.
The examiner relies upon the following references as
evidence of obviousness:
Small et al. (Small) 3,772,169 Nov. 13,
1973
Jokinen et al. (Jokinen) 4,783,274 Nov.
08, 1988
Appeal No. 1998-1281
Application No. 08/472,376
2
Lal 5,338,471 Aug. 16,
1994
The present application was copending with and was
related to U.S. Serial No. 08/474,295, filed June 7, 1995. An
appeal was taken to this Board in the related application and,
in a decision dated May 26, 1999, the Board affirmed the
examiner's rejection under 35 U.S.C. § 103 over references
presently applied by the examiner. All the appealed claims
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Lal in view of Small and Jokinen.
Under the heading GROUPING OF CLAIMS at page 3 of the
brief, appellant asserts the patentability of claim 1 and
states that "[s]ince claims 4, 6-36 and 38-40 depend or
ultimately depend from claim 1, they likewise are patentable."
Accordingly, since appellant has not presented separate
arguments for any of the dependent claims on appeal, all the
appealed claims stand or fall together with claim 1. In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987). See also 37 CFR 1.192 c(7) and c(8).
Appeal No. 1998-1281
Application No. 08/472,376
3
We have carefully considered each of appellant's
arguments for patentability. However, we are not persuaded by
appellant that the examiner has committed reversible error in
finally
rejecting the appealed claims. Accordingly, we will sustain
the examiner's rejection for essentially those reasons
expressed in the answer, and we add the following primarily
for emphasis.
Appellant does not dispute the examiner's factual
determination that Lal, the present inventor, discloses a
composition comprising a major amount of the claimed
triglyceride oil, a pour point depressant that is of the same
nature as the claimed component, and a viscosity improver. In
addition, appellant does not dispute the examiner's finding
that Jokinen establishes that the index improvers disclosed by
Lal and hydrogenated aliphatic conjugated diene/mono-vinyl
aromatic random block copolymers, are art recognized
equivalents, or that Small evidences the conventionality of
utilizing hydrogenated random block copolymers of styrene and
Appeal No. 1998-1281
Application No. 08/472,376
4
butadiene in the lube oil compositions wherein "the copolymer
contains 30-44 wt% of butadiene and 56-70 wt% of styrene and
wherein hydrogenation removes at least 95% of the olefins
unsaturation (See col. 2, lines 4-10)" (sentence bridging
pages 3 and 4 of answer). Finally, appellant does not contest
the reasoning underlying the examiner's legal conclusion that
"[i]t would have been obvious to
one of ordinary skill in the art to have utilized the styrene-
butadienes copolymers taught by Small in the composition of
Lal because (1) Lal desires a viscosity index improver, (2)
Jokinen teaches that those viscosity index improvers taught by
Lal are art recognized equivalents of styrene-butadiene
copolymers, and (3) Small teaches that the use of copolymers
of this type are conventional in the lubricant art" (page 4 of
answer, first paragraph).
It is appellant's contention that Jokinen does not
disclose the high degree of monounsaturation of the claimed
triglyceride oil, and that Small provides no teaching of
employing vegetable oils instead of synthetic lubricating oils
Appeal No. 1998-1281
Application No. 08/472,376
5
or mineral lubricating oils. Appellant concludes that
"[t]here is no teaching in Lal that could compensate for the
previously enumerated deficiencies of Jokinen et al. and Small
et al." (page 4 of brief, last full paragraph).
The fatal flaw in appellant's argument is that it fails
to address the basis of the examiner's rejection. Appellant
presents no argument in rebuttal to the examiner's rationale
that it would have been obvious for one of ordinary skill in
the art to employ a hydrogenated random block copolymer of
styrene and
butadiene of the type disclosed by Small as a viscosity
improver in the composition of Lal, i.e., appellant has not
explained why one of ordinary skill in the art would not have
considered it obvious to modify the composition of Lal in the
manner proposed by the examiner. In essence, we find
appellant's arguments to be non-responsive to the thrust of
the examiner's rejection. We also note that appellant bases
no arguments upon objective evidence of nonobviousness, such
as unexpected results.
One final point remains. In the event of further
Appeal No. 1998-1281
Application No. 08/472,376
6
prosecu-tion of the subject matter at bar, such as by way of a
continuing application, the examiner should also consider a
rejection under § 103 over Jokinen in view of Small for the
reasons articulated in the Board's decision in the related
application referenced above.
In conclusion, based on the foregoing and the reasons
well-stated by the examiner, the examiner's decision rejecting
the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
Appeal No. 1998-1281
Application No. 08/472,376
7
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
vsh
Appeal No. 1998-1281
Application No. 08/472,376
8
THE LUBRIZOL CORPORATION
PATENT DEPARTMENT
PATENT ADMINISTRATOR
29400 LAKELAND BOULEVARD
WICKLIFFE, OH 44092-2298
Appeal No. 1998-1281
Application No. 08/472,376
9
APPENDIX A
1. A composition, comprising;
(A) from about 95-98.8 parts by weight of at
least one vegetable oil or synthetic triglyceride
oil of the formula
O
Á
CH OC-R 2‘ 1Á
/ O
/ Á
CH OC-R ’ 2
Á
/ O
/ Á
CH OC-R 2’ 3
wherein R , R and R are aliphatic groups that are at1 2 3
least 60 percent monounsaturated and contain from
about 7 to about 23 carbon atoms, or a derivative
thereof;
(B) from about 0.1-2.5 parts by weight of a
hydrogenated block copolymer comprising a normal
block copolymer or a random block copolymer, said
normal block copolymer made from a vinyl substituted
aromatic and an aliphatic conjugated diene, said
normal block copolymer having from two to about five
polymer blocks with at least one polymer block of
said vinyl substituted aromatic and at least one
polymer block of said aliphatic conjugated diene,
said random block copolymer made from vinyl
substituted aromatic and aliphatic conjugated diene
monomers, the total amount of said vinyl substituted
aromatic blocks in said block copolymer being in the
range of from about 20 percent to about 70 percent
by weight and the total amount of said diene blocks
in said block copolymer being in the
Appeal No. 1998-1281
Application No. 08/472,376
10
range of from about 30 percent to about 80 percent
by weight; the number average molecular weight of
said normal block copolymer and said random block
copolymer being in the range of about 5,000 to about
1,000,000; and
(C) from about 0.1-2.5 parts by weight at least
one pour point depressant.