Ex Parte Patel et al

Board of Patent Appeals and Interferences

Dec 18, 2006

10282424 (B.P.A.I. Dec. 18, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PRAKASH S. PATEL and
SHABBIR ATTARWALA
__________

Appeal No. 2006-3310
Application No. 10/282,424
__________

ON BRIEF
__________

Before GRIMES, LINCK, and LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims to anti-seize compositions and methods of making
them. The Examiner has rejected the claims as indefinite and obvious. We have
jurisdiction under 35 U.S.C. § 134. We affirm-in-part.

Background
Flowable anti-seize lubricants are available to prevent metal fittings from
corrosion, seizing, and galling in harsh chemical environments and at high
temperatures. Specification, [0003]. Many of these compositions “tend to migrate once
applied, thus creating imprecise application and inconvenient and messy handling.”
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Application No. 10/282,424

WO ‘5281, page 1, lines 5-7. The instant application “provides anti-seize compositions
in a spreadable, yet dimensionally stable and solid form.” Specification, [0028].

Discussion
Claim construction
Claims 1-6 and 8-24 are appealed. These are all the pending claims in the
application. Claim 24 stands rejected as indefinite under § 112, second paragraph.
Claims 1-6 and 8-24 stand rejected over prior art. Appellants have separately argued
claims 20, 21, and 22 (with its dependent claim 23) from claims 1-6 and 8-19. Brief,
pages 3-4. Accordingly, these claims do not stand or fall together with claims 1-6 and
8-19. In the grouping of claims 1-6 and 8-19, claim 1 is the only independent claim. We
select that as representative for the purpose of deciding the rejection of claims 1-6 and
8-19. Below, we reproduce claims 1, 24, and separately argued claims 20, 21, and 22.
1. An anti-seize composition comprising:
a solid anti-seize lubricant selected from the group consisting of
metallic powders or flakes, non-metallic lubricants, and metal oxides,
hydroxides and fluorides;
a grease selected from the group consisting of a calcium-
containing grease, a sodium-containing grease, a lithium-containing
grease, an aluminum-containing grease, a bentonite clay-containing
grease, a silica-containing grease, a synthetic organic grease and
combinations thereof; and
a carrier having said anti-seize lubricant and said grease
dispersed therein, said carrier selected from the group consisting of oil,
polymeric matrix, wax, and petroleum oil having an API gravity at 60°F
from about 23 to about 25, said carrier being present in an amount to
render said composition non-flowable at temperatures greater than
about 120ºF,

1 Sports Care Products, WO 00/44528 (WO ‘528), August 3, 2000

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wherein said composition is dispensable at room temperature
without the application of heat and has a Mil-907-E breakaway torque
of less than 250 foot-pounds.

20. An article of manufacturer comprising:
a. a dispensing container for housing and returnably dispensing
a non-flowable anti-seize composition, said container comprising a
generally elongate hollow body having first and second ends, with one
of said ends defining a dispense opening;
b. the solid anti-seize composition of Claim 1 within said
container.

21. A method of using the article of Claim 20 comprising:
dispensing a portion of said anti-seize composition from said
dispense opening;
applying an amount of said portion of said anti-seize composition
onto a threaded surface of a substrate;
retracting an unapplied amount of said portion of said
composition through said dispense opening and into said elongate
hollow body.

22. A method for preparing a solid anti-seize composition comprising:
selecting a grease with an ASTM D 217 penetration at 25°C from
about 200 to about 400 mm;
selecting a naphthenic petroleum oil with a viscosity of less than
about 300 SUS at 100°F and an API gravity at 60°F from about 23 to
about 25;
mixing said grease and said oil to form a combined oil/grease
composition;
adding and mixing into said oil/grease composition (a) a solid
anti-seize lubricant; and (b) a polymeric matrix to form said solid anti-
seize composition.

24. The composition of Claim 1, wherein said anti-seize composition is
dimensionally stable up to 130°F.

The claimed anti-seize composition of claim 1 has three recited components:
anti-seize lubricant, grease, and a carrier. The carrier, which can be oil, polymeric
matrix, wax or petroleum oil, is present “in an amount to render said composition non-
flowable at temperatures greater than about 120°F.” The term “non-flowable” is not

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Application No. 10/282,424

defined in the application. However, the specification describes the compositions as
being “in a spreadable, yet dimensionally stable and solid form.” Id., [0028]. The
specification also states that the compositions “are capable of existing in a self-
supporting mass without migrating at temperatures of at least 70°F (21°C), desirably
120°F (49°C) up to at least about 130°F (55°C).” Specification, [0027]. Claims
“‘must be read in view of the specification, of which they are a part.’ . . . [T]he
specification ‘is always highly relevant to the claim construction analysis.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005) (internal
citations omitted). Accordingly, we construe “non-flowable,” in the context of the
specification, to mean that that the composition is spreadable, but non-migratory and
solid.
The specification provides examples of carriers and their melting or softening
temperature points. Specification, [0038], [0043], [0059], and [0060]. Since the
carrier’s presence in the composition “renders” it “non-flowable,” we infer that the
composition is solid at at least one temperature above 120°F, but becomes flowable
at a certain temperature (which is “greater than about 120°F”) as determined by its
melting or softening point in combination with the other components of the
composition.
In sum, we construe the limitation that the composition is “non-flowable at
temperatures greater than about 120ºF” to require that the composition is
spreadable, but non-migratory and solid, until it reaches a temperature above 120°F.

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To the extent that Appellants argue that the composition is non-flowable at
“temperatures between about 120°F and infinity,” we understand this to mean that
the composition could transition from being non-flowable to flowable at any point in
this range. See Brief, page 4.

Indefiniteness under § 112, second paragraph
Claim 24 stands rejected under 35 U.S.C § 112, second paragraph, as being
indefinite.
The claimed anti-seize composition of claim 1 is “non-flowable at temperatures
greater than about 120°F.” Dependent claim 24 further requires that “said anti-seize
composition is dimensionally stable up to 130°F.” The Examiner argues that claim
24 fails to further limit claim 1 because it is partly outside the scope of claim 1.
Claim 24 fails to further [limit] claim 1, i.e., claim 1 is directed to a composition
which is “non-flowable at temperature greater than about 120° F.” Temperatures
“greater than about 120°F” include all temperatures greater than about 120° F,
e.g., 130°F, 140°F, 150°F, 160°F, etc. Claim 24 depends upon claim 1 wherein
“said anti-seize composition is dimensionally stable up to 130°F”. The examiner
is of the position that the term “up to 130°F” includes 0°F -130°F.
Answer, page 6 (emphasis added by Examiner).

According to the specification, the anti-seize compositions “are non-flowable
and dimensionally stable, i.e., they are capable of existing in a self-supporting mass
without migrating at temperatures of at least 70°F (21°C), desirably 120°F (49°C) up
to at least 130°F (55°C).” Specification, [0027]. The specification also states that
“dimensional stability” indicates “that the formulation supports its own weight and
doesn’t change shape under gravitational forces.” Id., [0008]. As we understand it,

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non-flowability refers to the non-migratory property, and dimensional stability refers
to the ability to exist in a self-supporting mass.
We have construed the claimed limitation that the composition is “non-flowable at
temperatures greater than about 120ºF” to require that the composition is non-
flowable at a temperature above 120°F. As explained in our claim construction, we
interpret the claim in this manner because the specification describes specific
melting and softening points for the carrier, indicating that the composition becomes
flowable at a certain point above 120°F as determined by the carrier in combination
with the other components present in claim 1. Thus, we do not agree with the
Examiner’s interpretation that “greater than about 120°F” would “include all
temperatures greater than about 120°F, e.g., 130°F, 140°F, 150°F, 160°F, etc.”
Answer, page 6. Having rejected this claim construction, the requirement that the
composition is dimensionally stable up to 130°F (i.e., loses its ability to support its own
weight above 130°F), is consistent with claim 1 which requires that the composition to
be non-flowable at a temperature above 120°F. 130°F is a temperature above 120°F.
Thus, we reverse the § 112, second paragraph, rejection of claim 24.

Obviousness under § 103
Claims 1-6, 8-19, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over WO ‘528 in view of Hefling2 and WO ‘628.3

2 Hefling, U.S. Patent No. 5,498,351, March 12, 1996
3 Haas et al., WO 00/25628 (WO ‘628), May 11, 2000

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WO ‘528 describes a lubricant (“anti-galling agent”) “which provides a non-
migratory coating to metal surfaces to reduce two or more metal surfaces from seizing
or sticking together.” WO ‘528, page 2, lines 14-17. “The anti-galling agent is formed
into a stick for ease and convenience of use.” Id., page 12, line 1. It can be applied to
machinery, outdoor equipment, firearms, bicycles, and automotive and camping
equipment, “which include threaded, geared and/or bearing components.” Id., page 2,
lines 17-19. The anti-galling agent prevents threaded parts (such as nuts and bolts)
and bearing parts from seizing when exposed to high temperatures. Id., page 11, lines
25-33.
The anti-galling agent of WO ‘528 contains an anti-seize agent and a wax carrier.
Id., page 2, lines 20-21. (Compare instant claim 1 which contains an anti-seize agent
and carrier which can be wax). The anti-seize agent includes high melting temperature
anti-seize particles, such as “graphite powder, fluorinated polymers powder, and metal
powder.” Id., page 4, lines 3-14. The wax carrier acts as a carrier for the anti-seize
agent and assists “in the formation of a solid anti-galling agent.” Id., page 3, lines 8-10.
It can contain one or more types of wax, including animal wax, insect wax, mineral wax,
petroleum wax, vegetable wax, and synthetic wax. Id., page 5, lines 8-14. A dispersion
system can be present “to assist in generally uniformly dispersing and suspending the
. . . particles in the anti-galling agent.” Id., page 4, lines 18-20. “The dispersion system
can be an organic (petroleum oil, polymeric binders) or non-organic system.” Id., page
4, lines 20-21.
According to the Examiner, the claims differ from WO ‘528 “by further adding to
the composition a grease selected from the group consisting of a calcium-containing

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Application No. 10/282,424

grease, a sodium-containing grease, a lithium-containing grease, an aluminum-
containing grease, a bentonite clay-containing grease, a silica-containing grease, a
synthetic organic grease and combinations thereof.” Answer, page 4. The Examiner
finds that Hefling “teaches that oil-based vehicles for anti-seize compositions may, for
example, comprise hydrocarbonaceous components such as naphthenic or other oils,
lubricating greases, waxes and the like (column 3, lines 32-36).” Id. She concludes that
it would have been obvious to one of ordinary skill in the art to have used Hefling’s oil
and grease vehicle as a dispersion system because “WO ‘528 broadly teaches that the
dispersion system can be an organic (petroleum oil, polymeric binders) or non-organic
(page 4, lines 18-22).” Id., page 5.
Appellants argue that “the oil in the metal flake [anti-seize]/oil suspension [of
Hefling] acts as a dispersion system.” Reply, page 5. They contend “[t]here is no
disclosure in Hefling that this oil in the metal flake/oil suspension contains grease.” Id.
“In Hefling, it is the ‘oil-based vehicle’ or carrier used in the ultimate antiseize
composition, as opposed to the oil in the metal flake/oil suspension, that may contain
grease.” Id.
We are not convinced by Appellants’ arguments. To establish obviousness,
there must be some teaching, suggestion, or motivation to combine the references. In
re Rouffet, 149 F.3d 1350, 1355-1356, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Hefling
explicitly states that the “prior art anti-seizing compositions have typically been
formulated by dispersing metal flake in an oil-and/or-grease base composition.” Hefling,
column 1, lines 30-33. Grease is therefore described by Hefling as a conventional
dispersing agent in anti-seize compositions. Hefling also discloses a preference for

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Application No. 10/282,424

grease in an anti-seizing composition by including it in his preferred specific
embodiments. Id., column 7, lines 5-10; column 8, lines 40-45; column 10, lines 50.
The skilled worker would have been motivated to have selected grease as a component
of a dispersion system in view of Helfing’s teaching of it as a typical and preferred
alternative for anti-seizing compositions.
Appellants’ argument focuses on the disclosure by Hefling that the metal flakes,
which are the anti-seizing agent, are first dispersed in oil, and then formulated with other
ingredients, which include grease. Reply, pages 4-5. They assert that grease is not
used as a dispersion system. We agree with Appellants that Hefling’s manufacturing
process involves the production of an initial dispersion of the metal flakes in oil to which
grease is added in later. However, this does not foreclose the subsequent addition of
grease for its prior art function as a dispersing agent. Hefling includes grease in its
preferred embodiments, which we consider a strong teaching to add it to an anti-seizing
composition.
For the foregoing reasons, we find that claim 1 is prima facie obvious over WO
‘528 in view of Hefling. This rejection is affirmed. Claims 2-6, 8-19, and 24 fall with
claim 1 because they were not separately argued.
Claim 20
Claim 20 is drawn to a “dispensing container” which comprises the “solid anti-
seize” of claim 1. Appellants argue that WO ‘528 and Hefling fail to “teach a grease or
an article of manufacture comprising a grease-containing anti-seize composition, as is
recited in claim 20.” Brief, page 8.

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We do not find this argument persuasive. WO ‘528 describes a dispenser
containing an anti-galling agent. WO ‘528, page 12, lines 8-28. Appellants have not
distinguished the claimed structure from the dispenser disclosed in WO ‘528 and neither
have we. The Examiner relies on Hefling for the addition of grease to WO ‘528, not the
characteristics of the dispensing container. This rejection is affirmed.
Claim 21
Claim 21 is directed to a method of using the article of manufacture of claim 20,
comprising “dispensing” a portion of the anti-seize composition, applying it to a threaded
surface, and “retracting” unapplied amounts.
Appellants argue that WO ‘528 “fails to teach the dispensing and application of
an anti-seize compound.” Brief, page 10. We disagree. WO ‘528 specifically states
that its “dispenser is designed to contain the anti-galling agent to controllably dispense
the anti-galling agent.” WO ‘528, page 12, lines 8-9. “The dispenser also includes a
mechanism to allow a user to controllably remove the solid from the cavity of the
dispenser. The mechanism can include a movable base, a threaded member, a
slidable side member, etc.” Id., page 12, lines 14-17. We find that these elements
describe and enable the claimed method. Appellants have not provided persuasive
arguments to the contrary.
We have also considered Appellants’ other arguments about Hefling and WO
‘628, but do not consider them persuasive because they are not pertinent to the article
of manufacture which is claimed. This rejection is affirmed.

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Claims 22 and 23
Claim 22 is directed to a method for preparing a solid anti-seize composition
involving selecting a grease and naphthenic petroleum oil, mixing the grease and oil,
and then adding a solid anti-seize lubricant and polymeric matrix to the grease and oil
composition.
The Examiner cites WO ‘628 for its teaching of “compositions comprising a
polymeric matrix present in an amount sufficient to render the composition non-flowable
[at] temperatures of at least about 120°F.” Answer, page 4. She argues:
In this case, WO 00/44528, Hefling and WO 00/25628 are all directed to
compositions for preventing seizing of threaded fasteners. Accordingly,
one having ordinary skill in the art would have considered the teachings of
these references.
. . . .

WO ‘628, like WO ‘528, is directed to a composition for coating a threaded
part.

Answer, page 7.

Appellants assert:

WO 628 does not add to WO 528 to teach or suggest the present
invention. WO 628 is an adhesive. Adhesives typically promote the seizing
of at least two surfaces. Thus, the combination of WO 628 (an adhesive)
with WO 528 (an anti-seize agent) is clearly contradictory. Because WO
628 is an adhesive, it in fact teaches away from a method of preparing an
anti-seize composition, as is claimed by Appellants.

Brief, pages 11-12.

In making an obviousness determination, it is necessary to consider the scope
and content of the prior art. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(citing Graham v. John Deere Co., 383 US 1, 17, 148 USPQ 459, 467 (1966)).

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Application No. 10/282,424

Although § 103 does not, by its terms, define the “art to which [the] subject
matter [sought to be patented] pertains,” this determination is frequently
couched in terms of whether the art is analogous or not, i.e., whether the
art is “too remote to be treated as prior art.” In re Sovish, 769 F.2d 738,
741, 226 USPQ 771, 773 (Fed. Cir. 1985).
. . . .
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within
the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed.
Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979).

Clay at 966 F.2d at 658-59, 23 USPQ2d at 1060.

In this case, we do not consider WO ‘628 to be within Appellants’ field of
endeavor. WO ‘628 is concerned with “non-flowable adhesive and sealant
compositions which are particularly useful in the threadlocking and sealing applications.”
WO ‘628, page 1, lines 8-10. In experiments performed in WO ‘628, the adhesive was
applied to threaded bolts and “[t]he bolts were then mated with nuts and allowed to cure
24 hours.” Id., page 20, lines 19-21. Appellants’ claimed subject matter is an anti-seize
lubricant which is “useful for preventing seizing of threaded fasteners.” Specification,
[0001]. The objective of the claimed anti-seize composition is to lubricate surfaces, the
opposite of the purpose stated for WO ‘628. Consequently, we do not find them to be in
the same field of endeavor.
Even though WO ‘628 is not within Appellants’ field of endeavor, it may be
properly combined with WO ‘528 and Hefling if it is reasonably pertinent to the problem
addressed by Appellants.
A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which, because of the

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Application No. 10/282,424

matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem. . . . If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference
in an obviousness rejection. . . . If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it.

Clay, 966 F.2d at 659, 23 USPQ2d at 1061.

According to the instant specification, “there is a need in the art for a non-
flowable anti-seize formulation having dimensional stability up to and exceeding 120°F
so that it may be used in a variety of industrial settings.” Specification [0007]. WO ‘628
is also concerned with non-flowability, but in the context of an adhesive and sealant. In
our view, a person of ordinary skill in the art would not have reasonably considered a
polymeric matrix utilized to make an adhesive non-flowable applicable to solving the
problem of making a lubricant non-flowable. In making the adhesive for threadlocking,
the skilled artisan would not have worried that the polymeric matrix might cause the
threads to seize since the final purpose is to lock the parts together. In contrast, this
would have been a major concern of the skilled worker in making an anti-seize
composition. Accordingly, we do not find that prima facie obviousness has been
established for claims 22 and 23. This rejection is reversed.

Summary
The rejections of claims 1-6, 8-21, and 24 are affirmed. The rejection of claims
22 and 23 over prior art is reversed.

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Application No. 10/282,424

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

Eric Grimes )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Nancy J. Linck )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard M. Lebovitz )
Administrative Patent Judge )

Appeal No. 2006-3310 Page 15
Application No. 10/282,424

Marina F. Cunningham
McCormick, Paulding & Huber LLP
185 Asylum Street, City Place II
Hartford, CT 06103