11688702 (B.P.A.I. Apr. 3, 2012)

Ex Parte NULL

Board of Patent Appeals and InterferencesApr 3, 2012

11688702 (B.P.A.I. Apr. 3, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/688,702 03/20/2007 Volker Klaus NULL TS9564 (US) 1526 23632 7590 04/04/2012 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 772522463 EXAMINER PO, MING CHEUNG ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 04/04/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte VOLKER KLAUS NULL ____________ Appeal 2010-009540 Application 11/688,702 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and LINDA M. GAUDETTE, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 1-12 under 35 U.S.C. §103(a) as unpatentable over Germaine (WO 02/070636 A1, published Sep. 12, 2002) in view of Baillargeon (WO 01/57166 A1, published Aug. 9, 2001).2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Final Office Action mailed Aug. 13, 2009. 2 Appeal Brief filed Dec. 14, 2009 (“Br.”), 3. Appeal 2010-009540 Application 11/688,702 2 We sustain the above rejection based on the findings of fact, conclusions of law, and rebuttal to argument expressed by the Examiner in the Answer3. Appellant’s sole argument is that “in the context of functional fluids, it is not obvious to use a fluid having a kinematic viscosity wholly outside the range of that taught by a reference. Viscosity is a critical parameter in functional fluids and there would be no expectation of success for a formulation having a viscosity outside the disclosed range.” (Br. 3-4.) This argument lacks evidentiary support. Germaine teaches a kinematic viscosity of between 3.5 and 6 cSt (mm2/sec) is preferable (p. 5, ll. 21-22), but not critical. Moreover, Appellant’s own Specification teaches that “[t]he base oil component (i) may suitably have a kinematic viscosity at 100°C of below 5[.]5 mm2/sec” (Spec. 4:3-4), thereby evidencing a lack of criticality in the claimed “kinematic viscosity at 100 ºC of less than 3.5 mm2/sec” (claim 1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED sld 3 Examiner’s Answer mailed Mar. 18, 2010.