Ex Parte Shaw et alDownload PDFPatent Trial and Appeal BoardOct 30, 201411218647 (P.T.A.B. Oct. 30, 2014) Copy Citation 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. 11/218,647 09/02/2005 Robert W. Shaw 2004M012 1216 7590 10/31/2014 Infineum USA L.P. 1900 E. Linden Ave. P.O. Box 710 Linden, NJ 07036 EXAMINER VASISTH, VISHAL V ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 10/31/2014 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 ROBERT W. SHAW and MICHELE ANNE THORNHILL ____________ Appeal 2013-004470 Application 11/218,647 Technology Center 1700 ____________ Before CHUNG K. PAK, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134 from the Examiner's final rejection2 of claims 1 through 9, which are all of the claims pending in the above-identified application. A hearing was conducted on October 9, 2014. We have jurisdiction over this appeal under 35 U.S.C. § 6. 1 The real party in interest is said to be “Infineum International Limited, a company incorporated in England.” (Appeal Brief filed September 7, 2012 (“App. Br.”) at 1.) 2 Final Action mailed October 17, 2011. Appeal 2013-004470 Application 11/218,647 2 We AFFIRM. The subject matter on appeal is directed to “lubrication oil compositions” and [m]ore particularly…lubrication oil compositions which have low levels of phosphorus, sulfur and sulfated ash [(“low SAPS”)]. (Spec. 1, ll. 3-5 and 2, ll. 11-13.) Details of the appealed subject matter are recited in representative claim 13 from the Claims Appendix of the Appeal Brief, which is reproduced below: 1. A lubricating oil composition having a sulfur content of up to 0.3 wt.%, a phosphorus content of up to 0.08 wt.%, a sulfated ash content of up to 0.80 wt.% which comprises an admixture of: (a) a major amount of an oil of lubricating viscosity (b) at least one nitrogen-containing dispersant, the dispersant providing to the oil a nitrogen content of at least 0.075 wt. % nitrogen, the dispersant having a polyalkenyl backbone which has a molecular weight range of about 900 to 3000, and (c) an oil soluble or oil dispersible source of boron, present in an amount so as to provide a ratio of wt.% nitrogen to wt.% boron in the oil composition of about 3:1 to 5:1. (App. Br. 9, Claims App’x (emphasis added).) Appellants seek review of the Examiner’s final rejection of claims 1 through 9 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Nakazato (EP 1 167 497 A2 published in the name of Nakazato et al. on January 2, 2002) set forth in the Examiner’s Answer mailed November 14, 2012 (“Ans.”). (App. Br. 3.) 3 Appellants have not separately argued the claims on appeal. (App. Br. 3- 8.) Therefore, for the purposes of this appeal, we select claim 1 as representative of the claims on appeal and decide the propriety of the Examiner’s rejection set forth in the Answer based on this claim alone consistent with 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2013-004470 Application 11/218,647 3 DISCUSSION Having carefully reviewed and considered the evidence of record and arguments advanced by both the Examiner and Appellants, we affirm the above § 103 rejection for the reasons expressed by the Examiner in the Final Action and in the Answer. We add the following for emphasis and completeness. As found by the Examiner, Nakazato, like Appellants, describes a low “SAPS” lubricating oil composition, namely a lubricating oil composition having a low phosphorus content of 0.01 to 0.1 wt. %, preferably 0.01 to 0.06 wt.%, a low sulfated ash content of 0.1 to 1 wt.%, and a low sulfur content of 0.01 to 0.3 wt.%. (Compare Ans. 3with App. Br. 3-8; see also Nakazato, abstract and ¶¶ [0009], [0012] and [0013].) The Examiner also correctly found that Nakazato teaches that its lubricating oil composition has a major amount of a mineral base oil of lubricating viscosity, at least one nitrogen-containing dispersant comprising a polyalkenyl backbone having a molecular weight range of about 900 to 3000, and a borated succinimide- type dispersant as corresponding to the oils soluble or dispersible source of boron recited in the claims on appeal. (See Ans. 5 and Nakazato, ¶¶ [0012], [0022], [0026], [0054], [0055], and [0057].) Appellants contend that Nakazato “does not require the claimed minimum amount of dispersant nitrogen, does not require the inclusion of a boron source, and, to the extent that boron may be present, fails to require the nitrogen to boron ratio of the present claims.” (See, e.g., App. Br. 4-5.) However, Appellants have not disputed the Examiner’s finding that Nakazato teaches employing at least one nitrogen-containing dispersant comprising a polyalkenyl backbone having a molecular weight range of Appeal 2013-004470 Application 11/218,647 4 about 900 to 3000 in an amount to provide a nitrogen atom content of 0.01 to 0.3 wt.%, which significantly overlaps with the minimum content of nitrogen (at least 0.075 wt.% of N) recited in the instant claims. (Compare Ans. 7 with App. Br. 3-8.) Nor have Appellants disputed the Examiner’s findings that: [Nakazato] discloses the use of two dispersants in example 1, paragraph [0057] wherein the nitrogen content from the dispersants is .07 wt.% (.06 from dispersant B and .01 from dispersant C) and the boron content is 0.02 wt.% (0.005 x 4 = 0.02 wt% from dispersant B) as disclosed in paragraphs [0054]- [0055]. Therefore, the ratio disclosed in… [Nakazato] is 3.5:1 which is within the ratio as recited in instant claim 1. [(Compare Ans. 8 with App. Br. 3-8.)] This borated dispersant, according to the Examiner and Appellants’ own Specification, is encompassed by the boron source recited in the claims on appeal. (Ans. 7 and Spec. 14.) Consistent with the above findings of the Examiner, Appellants have also acknowledged that Nakazato “allows for the use of borated and non-borated [nitrogen] dispersants in various amounts….” (App. Br. 5.) Under the above circumstances, we determine that Appellants have not identified reversible error in the Examiner’s determination that Nakazato would have rendered the claimed subject matter prima facie obvious to one of ordinary skill in the art.4 As stated by our reviewing court in In re 4 Notwithstanding Appellants’ arguments to the contrary at pages 6 and 7 of the Appeal Brief, one of ordinary skill in the art reading Nakazato’s disclosure regarding the employment of nitrogen and boron containing dispersants in amounts that overlap with the amounts of nitrogen and boron claimed, would not be led away from using such claimed amounts of Appeal 2013-004470 Application 11/218,647 5 Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003), “[i]n cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” Conceding that the Examiner has established a prima facie case of obviousness regarding the claimed subject matter during the hearing (Transcript for the hearing conducted on October 9, 2014 (“Tr.”) at 8), Appellants focus on Example 1 and Comparative Examples B and C at pages 26 through 28 of the Specification to show that the claimed subject matter as a whole imparts unexpected results relative to the closest prior art.5 (See also App. Br. 7-8.) Nevertheless, Appellants' reliance on such showing in the Specification as demonstrating unexpected result over the closest prior art reference, Nakazato, is misplaced. On this matter, we are in complete nitrogen and boron. Nor would one of ordinary skill in the art, employing the amounts of nitrogen and boron within the amounts taught by Nakazato, have reasonably expected to change the principle of operation of Nakazato’s lubricating oil composition. Indeed, as is apparent from the table at paragraph [0071] of Nakazato, the lubricating oil compositions employed in Examples 1, 7, and 9 referred to by Appellants all have good “high temperature detergency” despite having a low sulfated ash content, a low phosphorus content, and a low sulfur content and despite having a ratio of nitrogen to boron content within the claimed ratio. (See also Nakazato, ¶ [0072].) 5 See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. [(Citation omitted and emphasis added.]”) Appeal 2013-004470 Application 11/218,647 6 agreement with the Examiner's views concerning the insufficiency of the proffered evidence.6 In particular, Appellants have not demonstrated that the showing is reasonably commensurate in scope with the degree of the protection sought by the claims on appeal as indicated by the Examiner at page 8 of the Answer. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)(quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971))(“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”); In re Harris, 409 F.3d 1339,1344 (Fed. Cir. 2005)(“The Board also correctly reasoned that the showing of unexpected results is not commensurate in scope with the degree of protection sought by the claimed subject matter because the elemental composition of CMSX®-486 is at or near the midpoint of the claimed range…. Harris needed to show results covering the scope of the claimed range.”) While the showing supposedly representative of the claimed subject matter is limited to a single lubricating oil composition containing specific amounts of particular ingredients, including specific amounts of particular boron and nitrogen containing dispersants, the claims on appeal are not so limited. (Compare Example1 at page 26 of the Specification with claim 1 on appeal.) Except for a mere 6 See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”); In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property.") Appeal 2013-004470 Application 11/218,647 7 argument that one example is sufficient, Appellants have not evinced that the asserted unexpected results applicable to such specific lubricating oil composition are also applicable to the multifarious lubricating oil compositions encompassed by the claims on appeal. (App. Br. 7-8.) Moreover, as also indicated by the Examiner at page 9 of the Answer, Appellants have not demonstrated that the claimed invention imparts unexpected results relative to the closest prior art, namely the lubricating oil composition shown in example 1 of Nakazato. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”) On this record, Appellants have not shown that the two lubricating compositions in Comparative Examples B and C are identical or comparable to the lubricating composition having 0.07 wt. % nitrogen and 0.02 wt. % boron shown in Example 1 of Nakazato. (See also Ans. 8 and App. Br. 6 relating to the nitrogen and boron contents of the lubricating oil composition exemplified in Example 1 of Nakazato.) Accordingly, on this record, we determine that the Examiner has not erred in determining that the preponderance of evidence weighs most heavily in favor of obviousness within the meaning of 35 U.S.C. §103(a). In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002)(“During patent examination the PTO bears the initial burden of presenting a prima facie case of unpatentability . . . . [W]hen a prima facie case is made, the burden shifts to the applicant to come forward with evidence and/or argument supporting patentability. Patentability vel non is then determined on the entirety of the record, by a preponderance of evidence and weight of argument.”) Appeal 2013-004470 Application 11/218,647 8 CONCLUSION In view of the findings and conclusion set forth above and in the Answer, 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 C.F.R. § 1.136(a)(1). AFFIRMED sl Copy with citationCopy as parenthetical citation