Ex parte RUDNICK et al.

Board of Patent Appeals and Interferences

Sep 17, 1997

07752138 - (D) (B.P.A.I. Sep. 17, 1997)

Application for patent filed August 29, 1991.1
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LESLIE R. RUDNICK and CARLETON N. ROWE
__________
Appeal No. 95-1640
Application 07/752,1381
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ON BRIEF
___________
Before SOFOCLEOUS, DOWNEY and JOHN D. SMITH, Administrative
Patent Judges.
DOWNEY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 31, 34-35, 38-42, all the pending claims
in the application.
Appeal No. 95-1640
Application 07/752,138
2
The claims are directed to a process for the preparation
of a high-temperature stable monoalkylated lubricant fluid or
lubricant additive and also to the lubricant fluid.
Claim 31 is illustrative of the subject matter on appeal
and reads as follows:
31. A process for the preparation of a high-
temperature stable monoalkylated lubricant fluid or
lubricant additive comprising catalytically reacting
in the presence of a zeolite catalyst selected from
the group consisting of zeolite beta, zeolite Y,
ZSM-12 and MCM-22 (1) a hydrocarbyl substituent
precursor, having at least one olefinic group and
optionally containing S, N, O, P, F, or mixtures
thereof, and (2) a thianthrene and wherein said
hydrocarbyl substituent is selected from the group
consisting of alkyl, alkenyl, alkynyl, arylalkyl, or
aryl, cyclic or linear containing from 3 to about
500 carbons wherein the reaction temperature varies
from ambient to about 350 C, the molar ratio of saido
hydrocarbyl substituent precursor to thianthrene
varies from 1:1 about 10:1 and the amount of
catalyst varies from 5 to about 100 grams of
catalyst to about 1 mole of thianthrene.
The reference relied upon by the examiner is:
Forbus et al. (Forbus) 5,171,915 Dec. 15, 1992
Claims 31, 34, 35, and 38-42 stand rejected under 35
U.S.C. § 102(e) as anticipated by and under 35 U.S.C. § 103 as
unpatentable over Forbus. We reverse both rejections.
Opinion
Appeal No. 95-1640
Application 07/752,138
3
Forbus is directed to the preparation of alkylaromatic
hydrocarbons, suitable as lubricant basestocks and additives,
by reacting at least one alkylatable aromatic compound and C -12
C mono-olefin in an alkylation zone in the presence of an40
acidic alkylation catalyst under alkylation conditions.
Forbus describes the alkylatable aromatic compounds as
substituted benzene, naphthalene and anthracene derivatives,
and the acid alkylation catalyst as a zeolite catalyst.
The examiner recognizes that Forbus does not specifically
disclose thianthrene as a reactant, and yet he alleges that
the expression "similarly substituted naphthalenes and
anthracenes" at column 5, lines 40-47, anticipates a
thianthrene reactant. Thianthrene a heterocyclic structure
and not a polynuclear aromatic compound as are the
naphthalenes and anthracenes. Accordingly, the 35 U.S.C. §
102 rejection cannot be sustained. Anticipation within 35
U.S.C. § 102 is established only when a single prior art
reference discloses, expressly, or under the principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984). Note also W.L.
Appeal No. 95-1640
Application 07/752,138
4
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983); and Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983).
The examiner also alleges that this same expression
"similarly substituted naphthalenes and anthracenes" would
have rendered obvious to one of ordinary skill in the art the
use of a thianthrene reactant.
It is true that when chemical compounds have "very close"
structural similarities and similar utilities, without more a
prima facie case may be made. See for example In re Wilder,
563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent
homologues and structural isomers); In re May, 574 F.2d 1082,
1090, 197 USPQ 601, 607 (CCPA 1978) (steroisomers); In re
Hoch, 428 F.2d 1341, 1342, 166 USPQ 406, 408 (CCPA 1970) (acid
and ethyl ester). However, where as here Forbus is directed
to polynuclear aromatic compounds and applicants' thianthrene
is a heterocyclic ring structure, there must be adequate
support in the prior art for the equivalence between the
aromatic naphthalene and anthracene and heterocyclic
thianthrene in order to establish a prima facie case and shift
Appeal No. 95-1640
Application 07/752,138
5
the burden of going forward to applicants. The examiner has
not provided any such evidence. The examiner's reliance upon
the expression "similarly substituted naphthalenes and
anthracenes" as suggestive of thianthrene is misplaced.
Forbus at column 5, line 40 describes a number of exemplary
substituted benzene compounds useful in the Forbus invention.
The expression "similarly substituted naphthalenes and
anthracenes" is suggestive of similarly substituted compounds
based on naphthalene and anthracene as the exemplified benzene
derivatives. Accordingly on this record, the examiner has not
established anticipation nor a prima facie case of obviousness
Appeal No. 95-1640
Application 07/752,138
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and the rejections are thereby reversed.
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MARY F. DOWNEY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 95-1640
Application 07/752,138
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Charles J. Speciale
Mobil Oil Corporation
Office of Patent Counsel
3225 Gallows Road
Fairfax, VA 22037