Ex Parte Levy

Board of Patent Appeals and Interferences

Nov 30, 2009

09357957 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RICHARD LEVY
______________

Appeal 2009-000443
Application 09/357957
Technology Center 1700
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Decided: November 30, 2009
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Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 29-32, 34-38, 41-43, 48, 49, 53, 55, 56, 58,
60-62, 64, 66-68, 72-85, 93, and 95-97 in the Office Action mailed April 11,
2006. In the Answer, the Examiner allowed claims 30, 55, 61, 64, 66, 75, 76,
and 80-84, and objected to claims 43, 56, 58, 60, 62, 67, 74, and 77-79 as
dependent on a rejected base claim. Ans. 2, 4, and 5. Claims 29, 31, 32,

Appeal 2009-000443
Application 09/357957
34-38, 41, 42, 48, 49, 53, 68, 72, 73, 85, 93, and 95-97 remain for
consideration on appeal. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2007).
We reverse the decision of the Primary Examiner.
Claim 29 illustrates Appellant’s invention of a lubricating
composition, and is representative of the claims on appeal:
29. A lubricating composition of matter comprising a polymer, where
said polymer comprises a superabsorbent polymer that absorbs greater than
about 100 times its weight in water combined with a material for lubricating
a surface wherein said material for lubricating a surface comprises:
(1) a lubricating metal and alloy thereof, lubricating metal
chalcogenide, halide, carbonate, silicate or phosphate, or a particulate
lubricating metal nitride, or a carbon lubricant;
or
(2) a silicate ester, polyphenyl ether, organic phosphate, biphenyl,
phenanthrene, or phthalocyanine compound;
(3) said material for lubricating a surface optionally containing a
lubricant comprising an organic lubricant, inorganic lubricant, or a lubricant
additive; or
(4) or a mixture thereof.
The Examiner relies upon the evidence in these references:
Obayashi 4,340,706 Jul. 20, 1982
Johnson 5,275,760 Jan, 4, 1994
Takayama 5,792,717 Aug. 11, 1998
Appellant requests review of the following grounds of rejection
advanced on appeal by the Examiner (App. Br. 110-11):

1 We considered the Appeal Brief filed September 24, 2007, the Examiner’s
Answer mailed December 14, 2007, and the Reply Brief filed February 14,
2008.
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Appeal 2009-000443
Application 09/357957
claims 29, 31, 32, 68, 72, 73, 85, 93, and 95-97 under 35 U.S.C. § 102(b)
over Takayama (Ans. 4); and
claims 29, 34-38, 41, 42, 48, 49, and 53, under 35 U.S.C. § 103(a) over
Johnson in view of Obayashi (Ans. 5).2
Opinion
The dispositive issue in this appeal is the interpretation to be made of
the language “wherein said material for lubricating a surface comprises:
(1) . . . a lubricating metal . . . carbonate, . . . or a particulate lubricating
metal nitride . . .” in representative independent claim 29. In considering the
issue, we interpreted the subject language of claim 29 by giving the terms
thereof the broadest reasonable interpretation in their ordinary usage in
context as they would be understood by one of ordinary skill in the art in
light of the written description in the Specification unless another meaning is
intended by Appellant as established therein, and without reading into the
claim any disclosed limitation or particular embodiment. See, e.g., In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and
cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
The plain language of claim 29 specifies a lubricating composition
comprising at least the superabsorbent polymer combined with a material for
lubricating a surface which comprises at least a lubricating material which
must be selected from group (1) and/or group (2). With respect to the

2 The Examiner has withdrawn the following grounds of rejection: claims
“29, 30, 31, 68, 72-79, 83 and their dependents” under 35 U.S.C. § 112, first
paragraph, written description requirement; and claims 29, 31, 35, 53, 55,
56, 61, 68, 72, 85, 93, and 95-97 over Martineu. Ans. 3.
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Appeal 2009-000443
Application 09/357957
ground of rejection over Takayama under § 102(b), the Examiner contends
that when the language “a particulate lubricating metal nitride” in group (1)
is given its broadest reasonable interpretation, Takayama’s porous ceramic
material, the pores of which are filled with a high water absorbing resin,
meets this limitation of claim 29. Ans. 4 and 6-7, citing Takayama, e.g., col.
3, ll. 59-62, col. 4, ll. 4-11, 30-32, and 60-62. We find Takayama further
teaches “[t]he ceramic powders are shaped by conventional techniques . . .
[and] then sintered.” Takayama, e.g., col. 4, ll. 11-21. In the Examiner’s
view, Takayama forms the ceramic material from “particulate boron nitride,”
and the “claims do not exclude forming a ceramic body from the particulate
boron nitride” and “do not set forth that the lubricant composition is a
‘particulate’ lubricant composition.” Ans. 6-7.
We agree with Appellant that the subject language “a particulate
lubricating metal nitride” plainly specifies that a particulate lubricating metal
nitride material, which can be boron nitride, is a member of the groupings of
lubricating materials at least one of which must be present in the lubricating
composition along with the superabsorbent polymer. App. Br. 19; Reply Br.
5; see claim 32. Indeed, the open-ended term “comprising” opens claim 29
to include lubricating compositions which contain ceramic materials, but
only in addition to materials in groups (1) and/or (2) required to be present
in the composition. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64
F.3d 1553, 1555 (Fed. Cir. 1995) (“The claimed composition is defined as
comprising - meaning containing at least - five specific ingredients.”); In re
Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers
in the reaction is propylene, any other monomer may be present, because the
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Appeal 2009-000443
Application 09/357957
term ‘comprises’ permits the inclusion of other steps, elements, or
materials.”).
On this record, the Examiner has not established that particulate boron
nitride is present in the compositions of Takayama. Thus, we reverse the
ground of rejection of claims 29, 31, 32, 68, 72, 73, 85, 93, and 95-97 under
35 U.S.C. § 102(b) over Takayama.
With respect to the ground of rejection over Johnson and Obayashi
under § 103(a), the Examiner contends that Johnson’s “alkali or alkaline
earth metal carbonate” falls within the claim language in the subject phrase
“a lubricating metal . . . carbonate” of group (1). Ans. 5 and 8, citing
Johnson, e.g., col. 4, ll. 44-48. Appellant contends that “Johnson does not
acknowledge carbonates as lubricating materials.” Reply Br. 5-6.
We agree with Appellant. The broadest reasonable interpretation of
the subject phrase “a lubricating metal . . . carbonate“ is any metal carbonate
which acts as a material for lubricating a surface. Appellant discloses and
claims lead carbonate as an example of surface lubricating metal carbonate.
Spec. 16:19-21, and 24:23-24; see claim 32. The Examiner has adduced no
evidence or scientific reasoning establishing alkali or alkaline earth metal
carbonates as a surface lubricating material falling within claim 29.
Accordingly, we reverse the ground of rejection of claims 29, 34-38,
41, 42, 48, 49, and 53, under 35 U.S.C. § 103(a) over Johnson in view of
Obayashi.
The Primary Examiner’s decision is reversed.

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Appeal 2009-000443
Application 09/357957
REVERSED

sld

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