Ex parte Peyton et al.

Board of Patent Appeals and Interferences

Aug 24, 1999

08340998 (B.P.A.I. Aug. 24, 1999)

Application for patent filed November 17, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KIM B. PEYTON and SOPHIA L. WANG
____________
Appeal No. 96-2898
Application No. 08/340,9981
____________
ON BRIEF
____________
Before METZ, JOHN D. SMITH and LIEBERMAN, Administrative
Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 1, 2, 18, 19, and 34-36.
Claims 1 and 35 are representative and are reproduced
below:
1. An additive composition for reducing the pour point
and wax haze in a lubricating oil, said composition comprising
Appeal No. 96-2898
Application No. 08/340,998
2
A) an esterified styrene-maleic anhydride copolymer wherein
the number of repeating units ranges from about 60 to about
400, and wherein said polymer is a reaction product of a
styrene-maleic anhydride copolymer and a mixture of C -C20 28
linear alcohols and C alcohol wherein the alcohols are in a 322
to 1 ratio for C -C linear alcohols to C alcohol; and B) an20 28 22
esterified alpha-olefin maleic anhydride copolymer wherein the
number or repeating units ranges from about 20 to about 220,
and wherein the alpha-olefin maleic anhydride copolymer is the
reaction product of maleic anhydride and an alpha-olefin
having 6 to 36 carbon atoms, and wherein the esterified alpha
olefin-maleic anhydride copolymer is a reaction product of an
alpha olefin-maleic anhydride copolymer and one or more
alcohols having from about 9 to about 18 carbon atoms in a
ratio of about 3 to 1 to about 1 to 3 of either esterified
copolymer to the other esterified copolymer.
35. A lube oil composition comprising:
a naphthenic lube oil displaying a wax haze at room
temperature and a quantity of an additive sufficient to
reduce the haze, said additive comprising a mixture of an
esterified styrene-maleic anhydride copolymer and an
esterified alpha-olefin maleic anhydride copolymer in a ratio
of about 1 to 3 and about 3 to 1 of either copolymer to the
other copolymer.
The references of record relied upon by the examiner are:
Gee et al. (Gee) 3,574,575 April 13, 1971
Bridger 4,548,725 October 22,
1985
The appealed claims stand rejected under 35 U.S.C. § 103
in view of Gee and Bridger.
We affirm.
The subject matter on appeal is directed to an additive
composition for reducing the pour point and wax haze in a
Appeal No. 96-2898
Application No. 08/340,998
3
lubricating oil such as a naphthenic lube oil. The additive
composition is comprised of two polymers; an esterified
styrene-maleic anhydride copolymer (SMA) and an esterified
alpha-olefin maleic anhydride copolymer (OMA). In a blended
combination in lube oils, the two copolymers are said to
provide an unexpected synergistic effect with respect to pour
point reduction of the lubricating oil when compared to the
pour point reduction effected by either copolymer used alone.
By way of background, appellants acknowledge that two
problems encountered with hydrocarbon lubricating oils are
visible wax particles and the need for pour point improvement
(specification, page 2, lines 6 and 7). Appellants further
state at page 2, lines 7-14 that
[W]ax particles in lubricating oils can
cause blockage of filters and delivery
lines on equipment and engines, thus
interfering with the flow of oil to moving
parts. Wax particles in lubricating oils
also cause the oil to look hazy. This is
especially a problem in those oils such as
automotive oils, turbine oils and the like
which are desirably bright and clear in
appearance at room temperature. These oils
typically include fractions taken from
paraffinic or naphthenic crude oils or
crude oil blends from Pennsylvania, Mid-
Continent, Gulf Coast and West Coast
regions.
Appeal No. 96-2898
Application No. 08/340,998
4
Appellants’ additive composition, as noted above, is said to
address both prior art problems in that it simultaneously
effects a reduction of wax haze and an alleged unexpected
synergistic reduction of pour point in lubricating oils.
As evidence of obviousness of the claimed subject matter
on appeal, the examiner relies on Gee and Bridger. Gee
discloses that esterified styrene-maleic anhydride copolymers
are useful as pour point depressants and fluidity improvers
for liquid hydrocarbon mineral oil compositions. See column
1, lines 31-41; column 1, line 63 to column 2, line 10; and
examples 1-5 of Gee. Gee also teaches that such oil
compositions “may contain other additive materials intended to
enhance the value of such compositions in certain well-defined
and specific aspects”. See column 6, lines 63-66 of the
reference.
The examiner relies on Bridger for the disclosure that
certain esterified maleic anhydride-olefin copolymers act to
reduce low temperature micro-crystalline wax formation in
mineral oils. See Bridger generally at column 1, line 66 to
column 3, line 44.
The examiner’s factual finding (answer,
Appeal No. 96-2898
Application No. 08/340,998
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page 3) that Gee’s esterified styrene-maleic anhydride
copolymers are identical to appellants’ claimed SMA copolymer
component is not disputed. Likewise, the examiner’s factual
finding (answer, page 3) that Bridger’s esterified maleic
anhydride-olefin copolymers are identical to appellants’
claimed OMA copolymer component is not challenged by
appellants.
Based on the combined teachings in the relied upon
references, the examiner argues, and we agree (particularly
when faced with the dual prior art problems encountered with
certain lubricating oils having visible wax particles and a
need for pour point improvement), that one of ordinary skill
in this art would have been led to have combined the copolymer
additives described in Gee and Bridger in a lubricant
composition based on a reasonable expectation of reducing the
lubricant pour point, improving the lubricant fluidity, and
reducing the low temperature micro-crystalline wax formation
in the lubricant.
Appellants’ fundamental argument on appeal is that the
evidence of record shows the performance of the claimed
composition “to be greater than that of the known performances
Appeal No. 96-2898
Application No. 08/340,998
In Smalheer et al. (Smalheer), LUBRICANT ADDITIVES, The2
Lezius-Hiles Co., Cleveland, Ohio, copyright 1967, pp. 1-11
(copy attached) at page 8, it is indicated that even the small
amount of wax remaining after dewaxing of “paraffin wax
present in almost all heavy mineral oil fractions” can raise
“by tens of degrees Fahrenheit the temperature at which an oil
will flow freely as measured by suitable “pour point” tests.
Thus, it is questioned whether the use of a composition
comprised of a blend of a copolymer known to disperse or
solubilize wax with a copolymer known to reduce pour point
would have been expected by a person of ordinary skill in this
art to simply demonstrate an additive effect in reducing the
pour point of a given lubricant.
6
of the individual components of said invention (brief, page
4).” Appellants characterize the data in Tables II and III of
their specification as a dramatic illustration of synergism
with respect to pour point reduction of certain lubricants
when the claimed additive combination is added. However, we
point out that while synergism is one factor to be considered
in the ultimate determination of obviousness of a composition,
“no magic status” should be attributed to synergism per se
“because it may be expected or unexpected”. In re
Huellmantel, 324 F.2d 998, 1002, 139 USPQ 496, 500 (CCPA
1963). Here, appellants have failed to establish a factual
basis for determining whether the reported data actually
represents unexpected synergism in this art. It is well2
Appeal No. 96-2898
Application No. 08/340,998
Appellants do not report the relative proportions of the3
specific linear alpha olefins in this blend. See the
specification at page 11, line 1.
7
settled that it is an appellants’ burden to demonstrate that
the difference in results obtained through a claimed invention
and those obtained by the prior art would not have been
expected by one skilled in the art. Here, appellants have not
met this burden.
In any event, we agree with the examiner that no claim on
appeal is reasonably commensurate in scope with the limited
showing of alleged unexpected results. In this regard, the
tested compositions referred to in appellants’ specification
involve the blends of very specific copolymers including, for
example, an esterified alpha-olefin maleic anhydride
copolymer prepared by reacting a C to C blend of linear10 18 3
alpha olefins with maleic anhydride. The appealed claims,
however, are much broader in scope, covering numerous other
OMA copolymer components, e.g., an esterified olefin-maleic
anhydride copolymer prepared from a 1-octadiene olefin as
exemplified in the example of Bridger. Thus, we find no
adequate basis for concluding that the great number of
Appeal No. 96-2898
Application No. 08/340,998
8
compositions included by the appealed claims would behave in
the same manner as the tested compositions.
In light of the above, we agree with the examiner that
the subject matter defined by the appealed claims would have
been obvious within the meaning of 35 U.S.C. § 103.

The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 96-2898
Application No. 08/340,998
9
ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
jrg Administrative Patent Judge )

Robert A. Miller
Patent & Licensing Department
Nalco Chemical Company
One Nalco Center
Naperville, IL 60563-1198