Ex Parte Markovitz et al

Patent Trial and Appeal Board

Aug 1, 2016

12491913 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/491,913
90363 7590
Hansen IP Law PLLC
P.O. Box 300069
Waterford, MI 48330
0612512009
08/02/2016
FIRST NAMED INVENTOR
Michael Markovitz
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.
5005-0001 6271
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAILDATE DELIVERY MODE
08/02/2016 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 MICHAEL MARKOVITZ, GUY VERANDINO, and
ANDREY FACTOR
Appeal2015-002627
Application 12/491,913
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and BRIAN
D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal 1 under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12, 15-17, 26, 29, 31, and 32. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is N anotech
Lubricants, LLC. Appeal Br. 2.
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Application 12/491,913
STATEMENT OF THE CASE
Appellants describe the present invention as relating to anti-wear
lubricant compositions that include nanodiamonds. Spec. i-f 2. Appellants
seek to avoid undesirable clumping and electrical charge regions. Id. at i-f 4.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
A method of making a lubricant composition, comprising:
combining a lubricating fluid, an added amount of water, and
carbon nanoparticles, wherein the carbon nanoparticles include
nanodiamonds; and
mixing the combination of lubricating fluid, water, and carbon
nanoparticles to produce a mixture of lubricating fluid, water,
and carbon nanoparticles, wherein the amount of water present
in the mixture ranges from greater than 200 ppm to about 2000
ppm by weight of the mixture, and the amount of carbon
nanoparticles in the mixture ranges from about 20 ppm to about
400 ppm by weight of the mixture.
Appeal Br.2 23 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Jacob
Gao et al.
(hereinafter "Gao")
Kozyuk
Hong et al.
(hereinafter "Hong")
US 2003/0107948 Al June 12, 2003
US 2004/0014615 Al Jan. 22, 2004
US 2005/0047271 Al March 3, 2005
US 2007/0158610 Al July 12, 2007
2 In this decision, we refer to the Final Office Action mailed June 12, 2012
("June 12, 2012 Act."), the Non-Final Office Action mailed December 31,
2013 ("Dec. 31, 2013 Act."), the Final Office Action mailed June 10, 2014
("Final Act."), the Appeal Brief filed September 10, 2014 ("Appeal Br."),
the Examiner's Answer mailed November 4, 2014 ("Ans."), and the Reply
Brief filed January 2, 2015 ("Reply Br.").
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Application 12/491,913
Nakagawa
Mabuchi et al.
(hereinafter "Mabuchi")
US 2008/0248979 Al Oct. 9, 2008
US 2009/0018037 Al Jan. 15, 2009
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-3, 12, 17, 26, and 29 under 35 U.S.C. § 103 as
unpatentable over Nakagawa in view ofMabuchi. Ans. 2.
Rejection 2. Claim 4 under 35 U.S.C. § 103 as unpatentable over
Nakagawa in view ofMabuchi as applied in Rejection 1 in further view of
Kozyuk. Id. at 4.
Rejection 3. Claims 5-11 under 35 U.S.C. § 103 as unpatentable over
the combination of Nakagawa, Mabuchi, and Kozyuk as applied in
Rejection 2 further in view of Hong. Id. at 5.
Rejection 4. Claims 15 and 16 as unpatentable over Nakagawa in
view of Mabuchi as applied in Rejection 1 in further view of Jacob. Id. at 6.
Rejection 5. Claims 31 and 32 as unpatentable over Nakagawa in
view of Mabuchi as applied in Rejection 1 in further view of Gao. Id. at 7. 3
ANALYSIS
We sustain the Examiner's § 103 rejections based on the findings of
fact, conclusions of law, and rebuttals to arguments well-expressed by the
Examiner in the Final Action and in the Answer. We provide additional
comments below for emphasis.
Rejection 1, claims 1-3, 12, 17, 26, and 29. The Examiner rejects
claims 1-3, 12, 17, 26, and 29 as obvious over Nakagawa in view of
3 Appellants' Claim Appendix lists claim 30 as "previously presented." The
Examiner has allowed that claim.
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Application 12/491,913
Mabuchi. Appellants first raise arguments with respect to claim 1. Appeal
Br. 4. Claims 2, 3, 12, 17, and 29 stand or fall with claim 1 because
Appellants do not separately argue those claims. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
Appellants argue that a person of skill in the art viewing Mabuchi
would not be motivated to combine Nakagawa's teachings for preparing the
composition because Nakagawa already teaches a preparing method.
Appeal Br. 4--5. The Examiner finds that Nakagawa teaches a lubricant
comprising 100 to 30,000 ppm diamond nanoparticles. Dec. 31, 2014 Act.
3--4; Nakagawa i-fi-f 111, 112. The Examiner also finds that Mabuchi teaches
adding nanoparticles to a lubricating composition similar to that of
Nakagawa as a dispersion in water. Final Act. 4; Mabuchi i177. Use of
Mabuchi' s teaching of a water dispersion to create the composition of
Nakagawa is a predictable use of a prior art element according to its
established function. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Thus, we agree with the Examiner that one of ordinary skill would
have been motivated to make use of this teaching. Ans. 8.
Appellants also argue that the prior art references teach away from
using water dispersion with Nakagawa's nanodiamond concentration
because Mabuchi teaches that nanoparticle content of less than 500 ppm is
"not preferable" and because Mabuchi's Example 4 has 400 ppm
nanodiamonds and is referred to as a "Comparative Example." Appeal Br. 5.
The Examiner finds that Nakagawa, however, teaches carbon nanodiamond
concentration as low as 100 ppm thus overlapping the claimed range. Ans.
8. The Examiner also finds that compositions in Nakagawa's Table 1
contain 100 ppm nanodiamond yet give friction coefficients similar to the
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Application 12/491,913
inventive examples in Tables 1-3 of Mabuchi. Appellants do not
persuasively rebut the Examiner's findings of fact. We thus agree with the
Examiner that Mabuchi's teachings do not teach away from the broader
disclosure of Nakagawa. Ans. 9; see also In re Lamberti, 545 F.2d 747, 750
(CCPA 1976) ("all disclosure of the prior art, including unpreferred
embodiments, must be considered").
Because Appellants identify no reversible error, we sustain the
Examiner's rejection of claims 1-3, 12, 17, and 29. Because Appellants
raise separate arguments regarding claim 26, we address that claim below.
Claim 26 recites, "The method of claim 1, wherein the amount of
water present in the mixture ranges from about 250 ppm to about 1600 ppm
by weight of the mixture." Appeal Br. 26 (Claims Appendix). Appellants
argue that the cited references do not teach this limitation because Mabuchi
teaches a minimum water concentration of 2000 ppm. Appeal Br. 9-10; see
also June 12, 20123 Act. 3 (Examiner calculates this 2000 ppm minimum
water based upon Mabuchi's minimum of 500 ppm nanoparticle present as,
at a maximum, 20% dispersion in water). The Examiner, however, finds
that one of ordinary skill preparing the composition of Nakagawa (with
minimum nanodiamond content of 100 ppm) and following the teachings of
Mabuchi would similarly prepare a dispersion in water having 5 to 20%
nanodiamond content. Ans. 10. The water concentration could therefore be
as low as 400 ppm. 4 Appellants identify no reversible error regarding the
4 A dispersion having 100 ppm nanodiamond and 400 ppm water would
have 20% nanodiamond content (100 I (100+400)=20%). The Examiner
calculates a minimum of 500 ppm. Ans. 10. This error is harmless,
however, as the correct calculation has even greater overlap with the recited
range of claim 26.
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Examiner's findings on this point. Thus, we agree with the Examiner that
claim 26' s recited water concentration is met by the combined teachings of
Nakagawa and Mabuchi.
Appellants also argue that evidence of unexpected results rebuts the
obviousness of claim 26 over Nakagawa and Mabuchi. Appeal Br. 9-12.
Appellants identify two different unexpected results from the composition of
claim 26: avoiding the need for a dispersant and achieving a desired level of
friction reduction with a reduced number of nanoparticles. Appeal Br. 9-12.
With respect to avoiding the need for a dispersant, we note that claim
26 does not forbid inclusion of a dispersant. Thus, lack of a dispersant
cannot be a distinguishing or unexpected feature given the breadth of the
claim. See, e.g., In re Greenfield, 571F.2d1185, 1189 (CCPA 1978)
("Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for 'it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."')
Moreover, the September 11, 2012, and October 25, 2012,
Declarations of joint inventor Guy Verandino do not support that this is an
unexpected result for a range of oils having water content ranging from
about 250 ppm to about 1600 ppm. Rather, Mr. Verandino states that this is
an advantage with respect to the composition referenced in the Specification
comprising Venom® SM/CF 5W30 Synthetic Motor Oil and 1667 ppm
water. Sept. 11, 2012, Verandino Deel. i-fi-14, 8, 9. Mr. Verandino also states
this is an advantage for compositions having various oils and 2000 ppm of
water added. Oct. 25, 2012, Verandino Deel. i-f l l(d). A preponderance of
the evidence does not establish that this advantage will exist, for example, at
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the 250 ppm water (the lower end of claim 26's recited range). The alleged
unexpected result is thus not reasonably commensurate with claim scope. In
re Greenfield, 571 F.2d at 1189; In re Huai-Hung Kao, 639 F.3d 1057, 1068
(Fed. Cir. 2011) ("Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims.").
With respect to achieving a desired level of friction reduction with a
reduced number of nanoparticles, the Examiner correctly finds that not all
tested compositions show superior results. Ans. 11. Mr. Verandino' s
Declaration does not show superior results commensurate in scope with
claim 26. In particular, Mr. Verandino states that the tested "Group I/III
blend and the low viscosity Group IV lubricants do not show friction
reductions in the claimed range of nanoparticles at the highest water level
relative to the zero added water case in all instances." Oct. 25, 2012,
Verandino Deel. i-f 13. Appellants' data shows, for example, that at 100 ppm
nanodiamonds and 2000 ppm water, there is less torque reduction than with
no water at all for the Group I oil test results depicted in Figure 1. Id. at i-f
12. Thus, Appellants have not established unexpectedly superior results
reasonably commensurate in scope with claim 26.
We therefore sustain the Examiner's rejection of claim 26.
Rejection 2, claim 4. Claim 4 recites "[t]he method of claim 1,
wherein the step of mixing comprises providing a high shear mixing device,
and mixing the combination of lubricating fluid, water, and carbon
nanoparticles with the high shear mixing device .... " Appeal Br. 23
(Claims Appendix). The Examiner rejects claim 4 as obvious over
Nakagawa in view ofMabuchi in further view ofKozyuk. The Examiner
finds that Kozyuk's high shear mixing device is an "advantageous method of
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combining a liquid component and substantially insoluble components, as
encountered in the composition of Nakagawa." Final Act. 6; see also
Kozyuk i1i12, 3.
Appellants argue that there would be no reason to consider using a
mixing device with Nakagawa or Mabuchi because Mabuchi teaches
"[ w ]hen such particle is dispersed in liquid, it tends to readily disperse so as
to hardly sediment." Appeal Br. 12 (quoting Mabuchi i-f 10). The portion of
Mabuchi quoted by Appellants indicates that some sediment may occur.
Moreover, the Examiner correctly finds that Nakagawa and Mabuchi teach
use of dispersing agents in at least some examples. Ans. 12. Thus, a
preponderance of the evidence supports that a person of skill in the art would
have been inclined to further mix the Nakagawa/Mabuchi composition in at
least some scenarios. Using Kozyuk for this purpose is no more than
predictable use of a prior art element according to its established function.
KSR Intern. Co., 550 U.S. at 416-17 ("The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results"). We thus agree that the combination would
have been obvious and sustain the rejection of claim 4.
Rejection 3, claims 5-11. Claim 5 recites "[t]he method of claim 4,
further comprising subjecting the mixture to ultrasonic stimulation." Appeal
Br. 23 (Claims Appendix). The Examiner rejects claims 5-11 as obvious
over Nakagawa, Mabuchi, and Kozyuk further in view of Hong. Hong
teaches using ultrasonication to form a suspension of nanoparticles in a
fluid. Dec. 31, 2013 Act. 7. Hong also teaches that ultrasonication is the
least destructive method of forming carbon nanoparticle suspensions. Id.;
Hong i160.
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Appellants argue that a person of skill in the art would not apply both
high shear mixing and ultrasonication and that a person of skill would not
look to Hong because it relates to a nanoparticle heat transfer fluid rather
than a nanoparticle lubricant. Appeal Br. 14. We agree with the Examiner,
however, that it would have been obvious to use high shear mixing and
ultrasonication in combination. Ans. 13. A person of skill would be
inclined to use Hong's ultrasonication with a nanoparticle lubricant because
Hong teaches "ultrasonication is the least destructive to the structures of
carbon nanoparticles." Hong i-f 60. Use of Hong's ultrasonication to further
mix the nanoparticle lubricant composition is no more than a predictable use
of a prior art element according to its established function. KSR Intern. Co.,
550 U.S. at 417.
Claims 6-10 stand or fall with that claim 5 because Appellants do not
separately argue those claims. 37 C.F.R. § 41.37(c)(l)(iv) (2013). We thus
sustain the Examiner's rejection of claims 5-10.
Claim 11 recites "[t]he method of claim 5, wherein the step of
subjecting the mixture to ultrasonic stimulation increases the temperature of
the mixture by an amount ranging from about 5Q F to about 60Q F." Appeal
Br. 24 (Claims Appendix). Appellants argue that the Examiner lacks
evidence that Hong's method will meet this limitation. Appeal Br. 16.
Hong explains that "the mixture is sonicated intermittently to avoid
overheating. It is well known that overheating can break the carbon
nanotubes to lose conjugated bonds and hence lose their beneficial physical
properties." Hong i-f 60; Ans. 14. From this, a person of skill would
understand that sonication necessarily creates some temperature increase and
that overheating should be avoided so that nanostructures are not destroyed.
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The degree of sonication and degree of heating are thus result-effective
variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012) ("A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective."). Hong's teaching
establishes that optimizing this variable would be within the capabilities of a
person of skill in the art.
Because temperature increase as a result of ultrasonication was a
known result effective variable at the relevant time, we agree with the
Examiner's conclusion that it would have been obvious to reach the
temperature values recited in claim 11 based on the prior art's teachings.
We thus sustain the Examiner's rejection of claim 11.
Rejection 4, claims 15-16. Claim 15 recites "[t]he method of claim 1,
wherein the step of mixing comprises combining the lubricant fluid, the
added amount of water, and the carbon nanoparticles in a vessel to define a
mixture precursor having a liquid level, the method further comprises
providing a mix head disposed beneath the liquid level, and the step of
mixing comprises drawing a volume of the mixture precursor into the mix
head and expelling the volume in a direction that is radially outward of the
mix head." Appeal Br. 25 (Claims Appendix). The Examiner rejects claims
15 and 16 as obvious over Nakagawa in view ofMabuchi in further view of
Jacob.
The Examiner correctly found that Jacob teaches a mixer meeting the
elements of claim 15. Dec. 31, 2013 Act. 7-8. Appellants present
arguments similar to those presented with regard to the Kozyuk reference.
Appeal Br. 17-18. As explained above, these arguments fail to identify
error. Nakagawa and Mabuchi suggest mixing may be beneficial and use of
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Jacob's mixer is no more than predictable use of a prior art element
according to its established function. KSR Intern. Co., 550 U.S. at 417.
Claims 16 stands of falls with claim 15 because Appellants do not
separately argue that claims. We thus sustain the Examiner's rejection of
claims 15 and 16.
Rejection 5, claims 31 and 32. Claim 31 recites "[t]he method of
claim 1, wherein the lubricating fluid comprises at least one selected from an
API Group I base stock and an API Group II base stock, the lubricating fluid
has a kinematic viscosity ranging from about 20 cSt at 40°C to about 350 cSt
at 40°C, the amount of water in the mixture ranges from greater than 200
ppm to about 2000 ppm by weight of the mixture, and the amount of
nanodiamonds in the mixture ranges from about 12 ppm to about 3 60 ppm
by weight of the mixture." Appeal Br. 27 (Claims Appendix). Claim 32
recites "The method of claim 31, wherein the amount of water in the mixture
ranges from about 250 ppm to about 1600 ppm." Id.
The Examiner rejects claims 31 and 32 as obvious over Nakagawa in
view of Mabuchi in further view of Gao. Gao discloses an engine oil as
recited in claim 31 and a trinuclear organomolybdenum antioxidant. Dec.
31, 2013 Act. 8-9. Gao teaches that its oil formulation leads to enhanced
oxidation stability and fuel efficiency. Id.; Gao i-f 4.
Appellants argue that Gao only achieves its efficiency when paired
with a trinuclear organomolybdenum and that Nakagawa teaches that
lubricants with organic molybdenum compounds are not sufficient for
improved fuel economy. Appeal Br. 19-20. The Examiner, however, finds
that the organomolybdenum compounds Nakagawa refers to are not the
same as the antioxidant of Gao (Ans. 15), and Appellants do not
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persuasively refute this point. We thus sustain the Examiner's rejection of
claim 31.
Appellants also argue that unexpected results support the patentability
of claim 32. Appeal Br. 20-21. The Examiner correctly finds, however,
that the Group I base oil of claim 3 2 is one of the base oils that Appellants'
evidence does not establish superior results for. Ans. 15-16. We thus
sustain the Examiner's rejection of claim 32.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-12, 15-17, 26, 29, 31, and 32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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