Ex Parte Tanaka et alDownload PDFPatent Trial and Appeal BoardJun 28, 201612442259 (P.T.A.B. Jun. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/442,259 0410912009 Keiji Tanaka 23632 7590 06/30/2016 SHELL OIL COMPANY PO BOX 2463 HOUSTON, TX 77252-2463 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. TS8102 (US) 9025 EXAMINER OLADAPO, TAIWO ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 06/30/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): USPatents@Shell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEIJI TANAKA, NORIAKI SHINODA, and TE TS UY A KA TOU 1 Appeal2015-001606 Application 12/442,259 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's maintained final rejection of claims 1-10, 13, and 14. 2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellants' claimed invention is generally directed to a urea grease composition. Spec. Abstract. 1 According to Appellants, the Real Party in Interest is Shell Oil Company. Appeal Brief filed July 22, 2014 ("Br."), 2. 2 Pending claims 18-21 stand withdrawn from consideration. Final Office Action mailed January 23, 2014, ("Final Act."), 2. Appeal2015-001606 Application 12/442,259 Claim 1 is illustrative: 1. A urea grease composition exhibiting good noise performance characteristics, wherein said urea grease composition comprises: a lubricating base oil selected from the group consisting of mineral oils, synthetic oils, plant oils and mixtures thereof; a diurea compound as shown by the General Formula (A) below: R 11NHCONHR12NHCONHR13 .... (A), (where R 11 and R 13 are groups selected from the group consisting of hydrocarbon groups having from 6 to 20 carbons, one of R 11 and R 13 is a dodecyl group and R 12 is a diphenylmethane group); and a diurea compound as shown by the General Formula (B) below: R21NHCONHR22NHCONHR23 .... (B), (where R21 and R23 are groups selected from the group consisting of hydrocarbon groups having from 6 to 20 carbons, at least one of R21 and R23 is an oleyl group, and R22 is a diphenylmethane group); wherein the diurea compounds are incorporated in an amount of from 2 to 30% by weight relative to the lubricating base oil. Br. 7 (Claims Appendix). REJECTION The Examiner maintains the final rejection of claims 1-10, 13, and 14 under 35 U.S.C. § 103(a) as obvious over Ikejima et al. (US 2002/0072477 Al, published June 13, 2002). 2 Appeal2015-001606 Application 12/442,259 DISCUSSION Having carefully reviewed the Examiner's rejection in light of arguments advanced by Appellants in their Appeal Brief, we are not persuaded that the Examiner erred reversibly in concluding that claims 1-10, 13, and 14 are unpatentable for obviousness. We add the following for emphasis. 3 Appellants argue claims 1-10, 13, and 14 as a group on the basis of claim 1, to which we limit our discussion. Br. 3-5. The Examiner finds that Ikejima discloses a grease composition comprising a synthetic base oil and 2% to 30% by weight of a urea thickener. Final Act. 3. The Examiner finds that Ikejima discloses that the urea thickener can be a mixture of one or more compounds from a defined genus of di urea compounds that includes the di urea compounds of Formulas (A) and (B) recited in claim 1. Final Act. 3--4. The Examiner concludes that Ikejima thus wouid have rendered the claimed urea grease composition prima facie obvious. Final Act. 4. Appellants do not argue that the Examiner fails to establish a prima facie case of obviousness of the claimed subject matter (Br., generally), but rather argue that data presented in Specification rebut the Examiner's prima facie case (Br. 3-5). Appellants do not, however, meet the burden required to rebut a prima facie case, that is, of demonstrating that the claimed invention imparts unexpected results that are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Klosak, 455 3 We refer to the Final Office Action mailed January 23, 2014, the Appeal Brief filed July 22, 2014, and the Examiner's Answer mailed September 16, 2014 ("Ans."). 3 Appeal2015-001606 Application 12/442,259 F .2d 1077, 1080 ( CCP A 1972) ("the burden of showing unexpected results rests on he who asserts them"); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189 (CCP A 1978) ("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."' (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971))). The Specification sets forth 18 inventive examples and 5 comparative examples describing the preparation of various grease compositions, and provides the results of experiments in which the exemplified grease compositions were evaluated for numerous properties, including their performance in a noise test, a sheH roH test, and a bearing iift test. Spec. 17- 49. Mineral oil was used as the lubricating base oil in the grease compositions of inventive Examples 1-16, while a mixture of mineral oil and synthetic oil A (a poly-a-olefin oil) was used in the composition of Example 17, and synthetic oil B (an alkyldiphenyl ether oil) was used in the composition of Example 18. Spec. 18, 11. 11-14; 45--48 (Table 1). The grease compositions of the inventive examples all contained 704g of the base oil except for Example 15 which contained 7 60 g and Example 16 which contained 616g. Spec. 45--48 (Table 1 ). With respect to the diurea compounds utilized in the inventive grease compositions, the Specification describes five diurea compounds, and indicates that the grease compositions of inventive Examples 1-18 each 4 Appeal2015-001606 Application 12/442,259 contained a blend of 2 to 5 of the compounds as a thickening agent. Spec. 18, 11. 16-31; 45--48 (Table 1 ). At least one of the diurea compounds in each inventive grease composition contained a dodecyl group, at least one contained an oleyl group, and each compound contained a diphenylmethane group. Id. The grease compositions of the inventive examples all contained 12% of the thickening agent except for Example 15 which contained 5% and Example 23 which contained 23%. Spec. 45--48 (Table 1 ). The grease compositions of comparative Examples 1-5 all contained either 704g or 680g of mineral oil, and contained either 12% or 15% of a blend of two or three diurea compounds used as a thickening agent. Spec. 18, 1. 32 to 19; 49 (Table 1). The diurea compound blends used in the comparative examples differed from those used in the inventive examples, and at least one of the diurea compounds in the blend used for comparative Examples 1 and 4 did not contain an oleyl group, while at least one of the compounds in the biend used for comparative Exampies 3, 4, and 5 did not contain a diphenylmethane group. Spec. 18, 11. 16-19; 45--49 (Table 1). Table 1 of the Specification indicates that the noise performance of the grease compositions of inventive Examples 1-18 was superior to that of the compositions of comparative Examples 1, 2, 4, and 5, but was roughly comparable to that of the composition of comparative Example 3. Spec. 45- 49. Table 1 further indicates that the grease compositions of inventive Examples 1-14 and 16-18, which all contained 12% of the thickening agent---except Example 16, which contained 23 o/o--all passed the shell roll test at room temperature and 150QC. Spec. 45--48. However, Table 1 indicates that inventive Example 15, which contained 5% of the thickening agent, did not pass the shell roll test at room temperature, and exhibited poor 5 Appeal2015-001606 Application 12/442,259 performance in the test at 150QC. Spec. 4 7. Table 1 further indicates that the grease composition of Comparative Example 3 did not pass the shell roll test at either temperature. Spec. 49. With respect to the performance of the grease compositions in the bearing life test at 150QC, Table 1 provides data for this test for the grease compositions of inventive Examples 1, 4---6, 8, 9, 13-15, 17, and 18, and for the grease compositions of comparative Examples 1, 3, and 5. Spec. 45--49. Table 1 indicates that the life in hours for the grease compositions of inventive Examples 1, 4---6, 8, 9, 13-15 was roughly comparable to that of the grease compositions of comparative Examples 1, 3, and 5, and only the grease compositions of inventive Examples 17 and 18 exhibited superior performance in this test. Id. Appellants argue that one of ordinary skill could not have predicted the advantageous noise performance and long life at high temperatures exhibited by the grease compositions of the inventive exampies based on the disclosure of Ikejima, and contend that the experimental data in the Specification thus rebuts the Examiner's conclusion of prima facie obviousness. Br. 4. However, we agree with the Examiner that Appellants fail to carry their burden of establishing that the data provided in the Specification are reasonably commensurate in scope with the claimed subject matter. Ans. 8- 10. Specifically, Appellants do not demonstrate that the results set forth in the Specification for a limited number of urea grease compositions would hold true across the entire scope of the multifarious urea grease compositions encompassed by claim 1. Br. 3-5. 6 Appeal2015-001606 Application 12/442,259 Claim 1 broadly recites a urea grease composition comprising a lubricating base oil that can be any mineral oil, any synthetic oil, any plant oil, and any mixture thereof. In contrast, the grease compositions of inventive Examples 1-16 contained only mineral oil as the lubricating base oil. Spec. 45--48. A single type of synthetic oil was used in the grease composition of Example 18, while a specific mixture of mineral oil and a single synthetic oil of a different type was used in the grease composition of Example 17. Spec. 18, 11. 11-14; 48. Claim 1 also broadly recites diurea compounds of General Formulas (A) and (B) in which one of R 11 and R 13 is a dodecyl group, while the other ofR11 and R 13 is any hydrocarbon group having 6 to 20 carbon atoms, and one of R21 and R23 is an oleyl group, while the other of R21 and R23 is any hydrocarbon group having 6 to 20 carbon atoms. As the Examiner correctly points out, hydrocarbon groups encompass a wide variety of groups such as iinear, branched, or cyciic aikyi, aikenyi, and aryi groups, and aiso inciude hydrocarbons having functional moieties, such as alcohols, ketones, amines, and amides. Ans. 9. Similarly, oleyl and dodecyl groups can also include functional moieties. Id. In contrast to the very expansive scope of the diurea compounds encompassed by the limitations in claim 1, the thickener blends of diurea compounds used in the grease compositions of the inventive examples are much more limited where the main constituents-the only ones particularly identified as present in any quantity-have at positions corresponding to R 11 , R 13 , R21 , and R23 of General Formulas (A) and (B) octyl, n-dodecyl, and oleyl groups. Spec. 18, 11. 16-31; 20-39 (Examples 1- 18). 7 Appeal2015-001606 Application 12/442,259 Moreover, claim 1 recites that the diurea compounds are included in the grease compositions in any amount ranging from 2% to 30% by weight relative to the lubricating base oil, but the grease compositions of the inventive examples contained 12% of the thickening agent except for the composition of Example 1 which contained 5% and the composition of Example 23 which contained 23%. Spec. 45--48. However, as discussed above, the grease composition of Example 15 both failed the shell roll test at room temperature and exhibited poor performance in the test at 150QC. Spec. 47. Accordingly, the breadth of the urea grease compositions encompassed by claim 1 greatly exceeds the limited number of grease compositions relied on to establish unexpected results. On this record, Appellants do not provide sufficient explanation or evidence to establish that the limited number of grease compositions used to generate the favorable noise performance data and iifo span data set forth in Table 1 are reasonably commensurate in scope with the urea grease compositions recited in claim 1. Br. 3-5. Appellants further argue, with respect to the thickening agents present in the claimed grease compositions, that the presence of an oleyl group and a dodecyl group in the thickening agents is essential, and "[a ]ll of the inventive examples provided in the Specification are indicative of the performance of urea grease compositions that comprise di urea compounds having at least an oleyl group and a dodecyl group." Br. 4--5. However, even if all of the grease compositions of the inventive examples do include diurea compounds having oleyl and dodecyl groups, Appellants' arguments do not squarely explain how this limited showing is reasonably 8 Appeal2015-001606 Application 12/442,259 commensurate with the scope of the diurea compounds that can be included in the claimed grease compositions. Id. In other words, Appellants do not address the breadth of the claimed grease compositions and explain why the limited results presented in the Specification be expected over the breadth of the compositions claimed. Id. Appellants further argue that the grease compositions of the inventive examples are not limited to including only a combination of 4 to 5 thickeners as the Examiner asserts, and contend that Examples 13 and 14 "are representative of urea grease compositions that contain a blend of only two thickeners." Br. 4--5. However, this argument does not establish that the results presented in Table 1 for the urea grease compositions of the inventive examples, regardless of the number of thickeners present in the compositions, would reasonably hold true across the full scope of the grease compositions encompassed by claim 1. AppeUants further argue that the grease compositions of the inventive examples are not limited to including only 12% or 23% of the thickening agent because the composition of Example 15 contains 5% thickener, which Appellants assert is indicative of the performance of the thickeners at the lower endpoint of the claimed range. Br. 5. However, as discussed above, the grease composition of Example 15 failed the shell roll test at room temperature (Spec. 47), further supporting the notion that the asserted advantageous results set forth in Table 1 of the Specification would not hold true across the broad scope of the claimed grease compositions. Moreover, Appellants do not direct us to any statement in the Specification attesting to the unexpected nature of the results shown in Table 1 or to any other persuasive evidence or averment evincing that these results 9 Appeal2015-001606 Application 12/442,259 would have been unexpected by one of ordinary skill in the art at the time of the invention. Br. 3-5. Absent such evidence or averment, Appellants cannot meet their burden. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) ("Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 ... Instead, the only reference to unexpected results was a statement by Geisler's counsel ... that Geisler's results were 'surprising."'). Appellants accordingly do not meet the burden of demonstrating that the claimed invention imparts unexpected results that are reasonably commensurate with the scope of protection sought by the claims on appeal as required to rebut the prima facie case of obviousness. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). DECISION In view of the foregoing, the Examiner's rejection of claims 1-10, 13, and 14 under 35 U.S.C. § 103(a) 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 ). AFFIRMED 10 Copy with citationCopy as parenthetical citation