Ex Parte Ritchie et al

Patent Trial and Appeal Board

Aug 31, 2016

10981954 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/981,954
7590
Infineum USA L.P.
1900 E. Linden Ave.
P.O. Box 710
FILING DATE
11105/2004
09/01/2016
Linden, NJ 07036-0710
FIRST NAMED INVENTOR
Andrew J.D. Ritchie
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.
2002L011 8106
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
MAILDATE DELIVERY MODE
09/01/2016 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 ANDREW J.D. RITCHIE, JAI G. BANSAL,
JACOB EMERT, GLEN P. FETTERMAN,
ANTONIO GUTIERREZ, MATTHEW D. IRVING,
CHRISTOPHER J. LOCKE, and MICHAEL T. MINOTTI
Appeal2014-007714
Application 10/981,954
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 24--28 and 30-40. We have jurisdiction. 35
U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Infineum
International Limited. Appeal Br. 1.
Appeal2014-007714
Application 10/981,954
STATEMENT OF THE CASE
Appellants describe the present invention as relating to additives for
lubricants which attract soot while not attracting sludge, oxidation products,
and water. Appeal Br. 5. Lubricants with the additives may be used in
diesel engines having exhaust gas recirculation (EGR) systems. Spec. 1 :3-5.
Claim 24, reproduced below with emphasis added to highlight disputed
claim recitations, is illustrative of the claimed subject matter:
24. A lubricating oil composition having a sulfur content of
less than 0.3 wt. %, said lubricating oil composition comprising
a major amount of oil of lubricating viscosity selected from
Group I, Group II and Group III mineral oil, and mixtures
thereof, having a saturate content of at least 85 %, a minor
amount of one or more high molecular weight polymers having
a number average molecular weight Mn equal to or greater than
5000, compnsmg (i) copolymers of hydrogenated
poly(monovinyl aromatic hydrocarbon) and poly (conjugated
diene ), wherein the hydrogenated poly(monovinyl aromatic
hydrocarbon) segment comprises at least about 20 wt.% of the
copolymer; (ii) olefin copolymers derived from at least Two
olefins selected from ethylene and C3 to C1s a-olefins, said olefin
copolymers containing alkyl or aryl amine, or amide groups,
nitrogen-containing heterocyclic groups or ester linkages and/or
(iii) acrylate or alkylacrylate copolymer derivatives having
dispersing groups derived from amine-containing monomer; and
a minor amount of a nitrogen-containing dispersant derived
from cationically polymerized, highly reactive
polyisobutylene; having a number average molecular weight
Mn of from about 1500 to about 3000, and a terminal
vinylidene content of at least 65°/o, wherein said dispersant
introduces from about 0.10 wt.% to about 0.18 wt.% of nitrogen
into said composition.
2
Appeal2014-007714
Application 10/981,954
Appeal Br. 2 9 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Ney et al. US 5,932,525 Aug. 3, 1999
(hereinafter "Ney")
Nakano et al. US 6,140,280 Oct. 31, 2000
(hereinafter "Nakano")
Koganei et al. US 6,329,328 Bl Dec. 11, 2001
(hereinafter "Koganei")
Locke et al. US 6,423,670 B2 July 23, 2002
(hereinafter "Locke")
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 24--28 and 30-40 under 35 U.S.C. § 103 as
unpatentable over Nakano in combination with Ney and Locke. Ans. 2.
Rejection 2. Claims 24--28 and 30-40 under 35 U.S.C. § 103 as
unpatentable over Koganei in combination with Ney and Locke. Ans. 5.
ANALYSIS
After having considered the evidence presented in this Appeal and
each of Appellants' contentions, we are not persuaded that Appellants
identify reversible error, and we affirm the Examiner's§ 103 rejections for
the reasons expressed in the Examiner's Office Action's and the Answer.
We add the following primarily for emphasis.
2 In this decision, we refer to the Final Office Action mailed May 14, 2013
("Final Act."), the Appeal Brief filed April 21, 2014 ("Appeal Br."), and the
Examiner's Answer mailed May 28, 2014 ("Ans.").
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Application 10/981,954
Appellants do not separately argue claims 25-28 or 30-40. We
therefore limit our discussion to claim 24. For each of the two rejections,
claims 25-28 or 30-40 stand or fall with that claim. 37 C.F.R. §
41.37(c)(l)(iv) (2013). We review the appealed rejections for error based
upon the issues identified by Appellants and in light of the arguments and
evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require
an applicant to identify the alleged error in the examiner's rejections")).
Appellants argue that the recited lubricant solves problems relating to
the soot that can negatively affect an EGR system. Appeal Br. 5-6. Claim
24, however, is directed to a lubricating oil composition and is not limited to
an EGR system or a method for addressing soot.
Appellants also argue that Nakano, Koganei, Ney, and Locke each
individually lack certain elements of claim 24. For example, Appellants
argue that Nakano and Koganei do not teach "dispersants derived from
cationically polymerized highly reactive polyisobutylene having a terminal
vinylidene content of at least 65%." Appeal Br. 6-7. The Examiner's
obviousness rejection, however, is based upon Locke teaching this element.
Ans. 3, 6; Final Act. 3--4; see also Locke 2:58--46. As another example,
Appellants argue that Koganei does not teach a "high molecular weight
polymer," but the Examiner relies upon Ney as teaching this element. Ans.
4, 6; Final Act. 4; see also Ney 6:21-12:50. Meanwhile, Appellants provide
no persuasive argument or reasoning as to why the Examiner erred in
combining the cited references. One cannot show nonobviousness by
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Application 10/981,954
attacking references individually when the rejection is based on a
combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
With respect to claim 24 's recited "minor amount of a terminal
nitrogen-containing dispersant derived from high reactive isobutylene ...
having a ... terminal vinylidene content of at least 65%" (Appeal Br. 9,
Claims Appendix), the Examiner finds that Locke establishes "such
nitrogen-containing dispersants are conventional as additives to heavy duty
diesel engine lubricating oil compositions" (Final Act. 3). In particular,
Locke teaches copolymers teaches copolymers having a "high degree
(e.g.,> 30%) of terminal vinylidene unsaturation." Locke 3:21-25; see also
Ans. 3, 6; Final Act. 3--4. Appellants argue that Locke "does not suggest
that a terminal vinylidene content of greater than 65% is advantageous over
lower vinylidene contents (eg. [sic], 30 to 64%) .... " Appeal Br. 7. Our
reviewing court, however, has held that "even a slight overlap in range
establishes a prima facie case of obviousness." See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). Here, the range disclosed by Locke completely
overlaps the claim 24's recited range, and prima facie obviousness is
established.
Appellants can rebut a prima facie case of obviousness by establishing
"that the [claimed] range is critical, generally by showing that the claimed
range achieves unexpected results relative to the [closest] prior art range." In
re Peterson, 315 F.3d at 1330 (internal quotes and citations omitted).
Appellants' brief here, however, provides no evidence or reasoning as to
why claim 24' s claimed range is critical or unexpected.
Appellants also argue that none of the cited references disclose
"dispersants providing 'non-basic' nitrogen." Appeal Br. 8. Claim 24 does
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Application 10/981,954
not require non-basic nitrogen, and Appellants fail to adequately make a
separate argument for patentability of any dependent claim. In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (holding that merely asserting that applied
prior art does not teach a recited limitation is not substantive argument for
separate patentability). Moreover, the Examiner finds that the prior art
teaches non-basic nitrogen (Final Act. 3), and Appellants do not dispute the
Examiner's rationale for reaching this finding.
Because the Appellants' do not establish Examiner error, we sustain
each of the Examiner's rejections.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
24--28 and 30-40.
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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