Ex Parte Takeuchi et al

Patent Trial and Appeal Board

Sep 28, 2016

11613961 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111613,961 12/20/2006
55741 7590 09/29/2016
M, CARMEN & ASSOCIATES, PLLC
1201 RXR Plaza
Uniondale, NY 11556
FIRST NAMED INVENTOR
Y oshitaka Takeuchi
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.
T-6711 8573
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAILDATE DELIVERY MODE
09/29/2016 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 YOSHIT AKA TAKEUCHI, YOSHITO YAMASHITA,
and MORIKUNI NAKAZATO
Appeal2015-008163
Application 11/613,961
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-008163
Application 11/613,961
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, 6, 8, and 11-15. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM and denominate our affirmance a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. 41.50(b).
Appellants' invention is directed to a method of improving the acrylic
rubber sealant compatibility in an internal combustion engine by contacting
the sealant with a lubricating oil composition having improved acrylic
rubber sealant compatibility (Spec. 1 :4--8).
Claim 1 is illustrative:
1. A method of improving the acrylic rubber sealant compatibility
in an automobile engine operated with a lubricating oil composition, said
method comprising contacting the acrylic rubber sealant in an automobile
engine in need of improved acrylic rubber seal compatibility and operating
the automobile engine with a lubricating oil composition comprising:
a) a major amount of a base oil of lubricating viscosity,
b) a nitrogen-containing ashless dispersant in an amount of 0.01 to 0.1
wt. % in terms of the nitrogen content, based on the total amount of the
lubricating oil composition,
c) a metal-containing detergent of an alkali metal or alkaline earth
metal salt of an alkylphenol derivative having a nitrogen-containing
Mannich base structure in an amount of 0.001 to 0.04 wt.% in terms of the
metal content, based on the total amount of the lubricating oil
composition, and
d) a phosphorus-containing organic compound in an amount of 0. 01 to
0.2 wt.% in terms of the phosphorus content, based on the total amount of
the lubricating oil composition, wherein the phosphorus-containing organic
compound is selected from the group consisting of zinc
dihydrocarbyldithiophosphates, zinc dihydrocarbylphosphates, phosphoric
acid esters, phosphorous acid esters, and thiophosphoric acid esters;
wherein the ratio of component b) to component c) is an acrylic
rubber sealant compatibility improving ratio of from 1:0.01 to 1:0.3 in terms
of the nitrogen content, and further wherein the metal-containing detergent
of an alkali metal or alkaline earth metal salt of an alkylphenol derivative
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Application 11/613,961
having a nitrogen-containing ivfannich base structure is represented by the
following formula:
wherein R is an alkyl group having 8 to 30 carbon atoms, and n is 0 or a
positive integer; and
further comprising e) a metal-containing detergent selected from the
group consisting of alkali metal or alkaline earth metal salicylates,
carboxylates, phenates and sulfonates in an amount of 1.0 wt.% or less in
terms of the metal content, based on the total amount of the lubricating oil
composition,
wherein the amount of the metal-containing detergent selected from
the group consisting of alkali metal or alkaline earth metal salicylates,
carboxylates, phenates and sulfonates and the amount of the metal-
containing detergent of an alkali metal or alkaline earth metal salt of
alkylphenol derivative having a Mannich base structure is an acrylic rubber
sealant compatibility improving ratio of 1:0.003 to 1:1 in terms of the metal
content; and
further comprising f) a molybdenum compound selected from the
group consisting of an oxymolybdenum complex prepared by the reaction
between an acidic molybdenum compound and a basic nitrogen compound,
sulfurized oxymolybdenum dithiocarbamate, and sulfurized
oxymolybdenum dithiophosphate, in amount of 0.25 wt. % or less in terms
of the molybdenum content, based on the total amount of the lubricating oil
composition.
Appellants appeal the following rejection:
Claims 1, 2, 6, 8, and 11-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yagishita (US 2005/0143266 Al, published June 30,
2005) in view of Smrcka et al. (US 5,370,805, issued Dec. 6, 1994)
("Smrcka"), Richardson et al. (US 6,362,136 Bl, issued Mar. 26, 2002)
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Application 11/613,961
("Richardson"), and Hirano et al. (US 2003/0216266 Al, published Nov. 20,
2003) ("Hirano").
Appellants argue claim 1 only (App. Br. 7-20). Claims 2, 6, 8, and
11-15 will stand or fall with our analysis of the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
Appellants argue that Smrcka is non-analogous art because it is not
related to improving acrylic rubber sealant compatibility as is Appellants'
field of endeavor and it is not reasonably pertinent to Appellants' problem
(App. Br. 7-12). Appellants contend that Smrcka is directed to lubrication
oil that protects silver bearings in a railway diesel engine such that one of
ordinary skill in the art would not have been motivated to look to Smrcka to
modify Yagishita's automobile engine lubricating oil (App. Br. 12).
Appellants rely on their previous citation to Mortier, 1 which was made of
record with the amendment filed May 13, 2014, as showing that one of
ordinary skill in the art would not have looked to railroad engine oil to
modify an automobile engine oil (App. Br. 9-11).
Contrary to Appellants' argument, the Examiner finds that Smrcka is
in the same field of endeavor: lubricating oil compositions and methods of
lubricating engines (Ans. 7). Appellants' field of endeavor includes
lubricating oil compositions for use in internal combustion engines and
methods of using the lubricating oil compositions in internal combustion
engines such that acrylic sealants are not harmed (Spec. 1 :4--8). The
lubricating oil composition provides the desired compatibility with the
1 Mortier et al. CHEMISTRY AND TECHNOLOGY OF LUBRICANTS 203-205
(Blackie Academic and Professional, 2nd ed., 1997) ("Mortier").
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Application 11/613,961
acrylic seals. In other words, the lubricating oil composition is the focus of
the claimed method. The field of endeavor is lubricating oil compositions
used in internal combustion engines. The Examiner reasonably finds that
Smrcka and Y agishita are each directed to lubricating oils for internal
combustion engines. Mortier may instruct that different lubricating oils
have different purposes and cannot be interchanged for different uses. The
Examiner, however, is not proposing to use, for example, Smrcka' s
lubricating oil as the lubricating oil in Y agishita' s internal combustion
engine. Appellants' argument that Smrcka is directed to railway engine oil
fails to appreciate that the same or similar additives are used in different
lubricating oils. Indeed, Smrcka and Y agishita each disclose that alkali
metal Mannich phenate detergents are used in lubricating oils (Smrcka col.
4, 11. 61-68; Yagishita i-f 99). In other words, the Appellants argument looks
too narrowly at Smrcka' s disclosure. Persons of ordinary skill in the art
would have availed themselves of teachings in prior art directed to
lubricating oils and suitable additives for use in lubricating oils.
Appellants argue the Examiner has not established that one of
ordinary skill in the art would have combined the amounts of Smrcka' s
Mannich detergents with Yagishita's broad generic range of 0.01to20%
dispersants to create a fictitious ratio that satisfies the claim (App. Br. 13).
Appellants contend that Smrcka's dispersant to Mannich detergent ratio
based upon nitrogen content in Examples 4 and 5 yields a nitrogen ratio that
is outside the claimed range of dispersant to detergent ratio based upon
nitrogen recited in the claim 1 (App. Br. 14--15). Appellants contend that
this teaches away from the claimed dispersant to detergent ratio based on
nitrogen in claim 1. Id.
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Application 11/613,961
It is not necessary to answer Appellants' arguments regarding Smrcka
because we interpret the Examiner's rejection as not solely based upon using
Smrcka's amounts of the Mannich detergent from Examples 4 and 5 in
determining the ratio of dispersant to detergent. Rather, the Examiner's
obviousness conclusion is based upon including the detergent mixture of
Smrcka as the detergent mixture in the composition of Y agishita because the
detergents of Smrcka fall within the classes of detergents disclosed by
Y agishita and Smrcka teaches that the detergents are useful in lubricating
internal combustion engines (Ans. 6). In other words, the Examiner finds
that Yagishita's Mannich detergent and Smrcka's Mannich detergent are in
the same class of detergents. The similarity of the detergents would have
suggested using Smrcka' s Manni ch detergent for the detergent in Y agishita' s
lubricating oil composition. Once that substitution is made, the ordinarily
skilled artisan would have used an amount of Manni ch detergent within the
range disclosed as suitable for Y agishita' s lubricating oil composition (i.e.,
0.01 to 1 percent by mass) (Yagishita i-f 105). Smrcka teaches that the
Mannich detergent has 1.6% nitrogen, so the range of nitrogen would be
from 0.00016% (i.e., .016 x 0.01) to 0.016% (i.e., .016 x 1). The Examiner
further finds that Y agishita teaches that the nitrogen content of the dispersant
is 2% and the range of nitrogen content of the dispersant ranges from
0.0002% to 0.4% (Ans. 8). Accordingly, the ratio of dispersant to detergent
based upon nitrogen content yields a ratio of 1:0.04 (i.e., 0.016/0.4) that falls
within the range of 1:0.01 to 1:0.3 recited in claim 1.
Appellants argue the Examiner has not shown that any of the applied
prior art references disclose Appellants' structural formula for Mannich
detergents (App. Br. 15-16). Appellants' argument fails to appreciate that
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Application 11/613,961
the Examiner finds that Smrcka teaches the calcium ivfannich phenate is
prepared from propylene-tetramer alkylphenol, paraformaldehyde,
monomethylamine, and lime (Ans. 9). The Examiner finds that Appellants
disclose on page 8, lines 20-26 of the Specification that the Mannich
detergents are formed from the reaction of an alkylphenol, formaldehyde, an
amine, and a base, which is similar to the reaction taught by Smrcka (Ans.
10). Because the same or similar materials are reacted in the same or similar
manner it is reasonable to find that the resulting Mannich detergent would be
the same or similar in structure. Appellants do not respond to this finding of
the Examiner (Reply Br. generally).
Appellants argue that Richardson teaches ways to extend the life of
various elastomer seals using a completely different method (App. Br. 16).
Appellants contend that Richardson adds a sulfur-containing anti-wear
compound such as hydrocarbyl mercaptans to extend the life of the seals. Id.
Appellants contend that one of ordinary skill in the art simply would have
added the hydrocarbyl mercaptan to the lubricating oil instead of making the
other modifications proposed by the Examiner in order to provide better
acrylic sealant life (App. Br. 17). Appellants contend that there is no reason
to modify Yagishita with Richardson's teachings absent hindsight (App. Br.
17-18). Appellants argue that it is unpredictable that using Y agishita' s
lubricating oil as modified by Smrcka and Hirano would have resulted in an
oil that does not affect the acrylic sealant and Richardson teaches a solution
to the problem: using the hydrocarbyl mercaptan (App. Br. 20).
Contrary to Appellants' argument, the Examiner relies on Richardson
to teach that the acrylic sealants are known to be used in internal combustion
engines (Ans. 5-6). Appellants do not dispute that it would have been
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Application 11/613,961
obvious to have an acrylic sealant in Yagishita's internal combustion engine.
Once the combination is made, the improved acrylic sealant life would have
flowed naturally from following the teachings of the references; the prior art
need not recognize the attendant properties of the lubricating oil
composition. The Examiner provides a rationale for using Smrcka's
Mannich detergents and Hirano's lubricating oil additives in Yagishita's
lubricating oil composition (Ans. 6-7). That rationale need not be the same
as Appellants' rationale. Furthermore, as noted by the Examiner the claims
do not exclude using Richardson's hydrocarbyl mercaptan to further
improve acrylic sealant life (Ans. 7, 10).
On this record, we affirm the Examiner's§ 103 rejection over
Yagishita in view of Smrcka, Richardson, and Hirano. Because we rely on
different fact findings than the Examiner with regard to Y agishita and
Smrcka teaching the dispersant to detergent ratio in terms of nitrogen
content, we denominate our affirmance a new ground of rejection.
DECISION
The Examiner's decision 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)(l).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that a "new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 11/613,961
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
Should the appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the ,LA~ppellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment, or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
ORDER
AFFIRMED & NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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