Ex Parte Matsui et alDownload PDFPatent Trial and Appeal BoardMay 25, 201612812524 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/812,524 10/04/2010 7055 7590 05/27/2016 GREENBLUM & BERNSTEIN, PLC 1950 ROLAND CLARKE PLACE RESTON, VA 20191 FIRST NAMED INVENTOR Shigeki Matsui 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. P38648 8244 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 05/27/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIGEKI MATSUI and AKIRA Y AGUCHI Appeal2014-009757 Application 12/812,524 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision to reject claims 1-3, 5, and 6. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 illustrates the subject matter on appeal and is reproduced below: Appeal2014-009757 Application 12/812,524 1. A lubricating oil composition comprising: a lubricating base oil having a kinematic viscosity at 100°C of 1-10 mm2/s, a viscosity index of 120 or greater, a %CP of 80 or greater and a %CA of not greater than 0.5; a first viscosity index improver of 0.1-3 % by mass, based on the total weight of the composition, wherein the first viscosity index improver is a poly(meth)acrylate having a weight-average molecular weight of not greater than 100,000; and a second viscosity index improver of 5-20 % by mass, based on the total weight of the composition, wherein the second viscosity index improver has a PSSI of no greater than 40 and a ratio of weight- average molecular weight/PSS! of at least 1 x 104, and is a polymer having a weight-average molecular weight of 100,000 or greater and containing a structural unit represented by the following formula (1) in a proportion of 0.5- 70 mol% and methyl methacrylate, [Chemical Formula 1] r C-CH·~ I . (1) c=z) JJ-R?. wherein R1 represents hydrogen or a methyl group and R2 represents a C22 or greater straight-chain or branched hydrocarbon, or an oxygen- and/or nitrogen-containing C22 or greater straight-chain or branched organic group, 2 Appeal2014-009757 Application 12/812,524 the composition having a kinematic viscosity at 100°C of 4--12 mm2/s and a viscosity index of 140-300. Appellants (App. Br. 9) request review of the following rejections from the Examiner's Final Office Action: I. Claims 1, 3, 5, and 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Loh (US 2008/0029430 Al, published February 7, 2008) and Auschra (US 5,756,433, issued May 26, 1998). II. Claim 2 rejected under 35 U.S.C. § 103(a) as unpatentable over Loh, Auschra, and Kurihara (US 2001/0027169 Al, published October 4, 2001). OPINION Prior Art Rejections1 Independent claim 1 is directed to a lubricating oil composition comprising first and second viscosity index improvers where the second viscosity index improver has a PSSI of no greater than 40 and is a polymer containing a structural unit represented by formula ( 1) of the claim comprising a C22 or greater straight-chain or branched component and a methyl methacrylate. After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner's prior art rejections for the reasons presented by Appellants. We add the following. The Examiner found Loh discloses a lubricant hydraulic fluid comprising a base oil, a first polymethacrylate viscosity index improver a weight average molecular weight of 25,000 to 150,000 and a second 1 We limit our discussion to independent claim 1. 3 Appeal2014-009757 Application 12/812,524 polymethacrylate viscosity index improver a weight average molecular weight of 500,000 to 1,000,000 and a shear stability index (PSSI) of 25 to 60, the lubricant hydraulic fluid differing from the claimed invention in that Loh does not disclose a specific polymethacrylate suitable for the higher molecular weight viscosity index improver. Final Act 2-3; Loh Table 1, i-fi-1 7, 10, 62, 66, 72, 88. The Examiner found Auschra discloses a viscosity index improver for lubricating compositions containing a polymethacrylate having a weight-average molecular weight in the range 5,000 to 1,000,000 and comprising an alkyl (meth)acrylate monomer where the alkyl group contains from 6 to 30 carbon atoms, overlapping the claimed C22 or greater alkyl methacrylate monomer of the second viscosity index improver. Final Act. 3; Auschra claim 3, col. 1, 11. 25-26, 39-55, col. 2, 11. 60-68, col. 3, 11. 1-26. The Examiner also found Auschra discloses viscosity index improvers, such as PFP-8, comprising polymers having PSSI values recited in Table 1 that fall within the claimed PSSI range. Final Act. 4; Auschra col. 12 (Table 1). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to use the viscosity index improver of Auschra as the high molecular weight viscosity index improver of Loh because Auschra teaches that it is a suitable polymethacrylate viscosity index improver for lubricating compositions. Final Act 4. Appellants argue the polymer of Auschra's PFP-8 viscosity index improver, having a PSSI that falls within the claimed PSSI requirement, does not have the claimed structural unit comprising a C22 or greater straight-chain or branched component and a methyl methacrylate as required by the subject matter of independent claim 1. App. Br. 13. According to Appellants, the viscosity index improver PFP-8 comprises a polymer having 4 Appeal2014-009757 Application 12/812,524 a structural unit based on a C 11---C 16 component. App. Br.13; Auschra col. 7, 1. 43---col. 8, 1. 16, col. 10, 1. 53---col. 11, 1. 1. Appellants argue that the Examiner has not established that replacing the monomers for the polymer of Auschra's PFP-8 viscosity index improver with monomers having a structural unit comprising a C22 or greater component would result in a PSSI of no greater than 40. App. Br. 13. Thus, Appellants assert the Examiner has not established that it would have been obvious to arrive at the claimed second viscosity index improver based upon any disclosure within the prior art. Id. at 13-14. Appellants have established that the preponderance of the evidence weighs in favor of concluding that the Examiner has not established a prima facie case of obviousness. As noted by Appellants, the polymer of Auschra' s PFP-8 viscosity index improver is not the same structure as the polymer of the claimed second viscosity index improver because it lacks the claimed structural unit comprising a C22 or greater straight-chain or branched component. App. Br.13; Auschra col. 7, 1. 43---col. 8, 1. 16, col. 10, 1. 53---col. 11, 1. 1. The Examiner's rejection is premised on modifying the PFP-8 polymer to incorporate the structural unit recited in claim 1 to arrive to the PSSI and molecular weight of the claimed polymer. Ans. 6. However, the Examiner has not presented an adequate technical explanation of how one skilled is the art would have modified the polymer of Auschra's PFP-8 improver to arrive the claimed polymer and improver. The Examiner has also not pointed to any portion of Auschra or any other evidence that would have guided one skilled in the art to make the proposed modification. Moreover, the Examiner has not provided any evidence to substantiate that even if Auschra's PFP-8 polymer were modified as to have a C22 structural 5 Appeal2014-009757 Application 12/812,524 unit the resulting polymer would have a PSSI within the claimed range. The Examiner's findings with regard to Auschra's teaching or suggesting this claim limitation are speculative and lack the requisite findings to support such a position. Thus, we agree with Appellants that the Examiner has not adequately explained how one skilled in the art would have combined the teachings of the prior art to arrive to the claimed invention. Under these circumstances, we cannot conclude that the Examiner has satisfied the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner's prior art rejections of claims 1-3, 5 and 6 for the reasons presented by Appellants and given above. In view of our reversal of the prior at rejections, we do not reach Appellants' showing of unexpected results in the Specification because the Examiner has not presented a prima facie case of obviousness. App. Br. 14; Spec, i1i17, 14, 113. ORDER The Examiner's prior art rejections of claims 1-3, 5 and 6 under 35 U.S.C. § 103(a) are reversed. REVERSED 6 Copy with citationCopy as parenthetical citation