Ex Parte Van Leeuwen et al

Patent Trial and Appeal Board

Feb 27, 2017

11613015 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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.
11/613,015 12/19/2006 Jeroen Van Leeuwen T-6858 7058
55741 7590
Michael E. Carmen, Esq.
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
ny office @ rml-law. com
mec @ rml-law.com
bmg@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROEN VAN LEEUWEN and
YOSHITAKA TAKEUCHI1
Appeal 2016-000553
Application 11/613,015
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—12, 18—20, 23—50, and 54—68. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to lubricating oil compositions
and associated methods. E.g., Claims 1, 39, 54, 57. Claim 1 is reproduced
1 According to the Appellants, the real party in interest is Chevron Oronite
Company LLC. App. Br. 2.
Appeal 2016-000553
Application 11/613,015
below from page 22 (Claims Appendix) of the Appeal Brief (some
formatting added):
1. An internal combustion engine lubricant composition, which
comprises an admixture of:
(a) a major amount of an oil of lubricating viscosity;
(b) one or more ashless dispersants;
(c) one or more metal-containing detergents; and
(d) a piston-cleanliness-enhancing amount of at least one
reaction product of a polyisobutylene and a
monounsaturated acylating agent,
wherein the polyisobutylene (PIB) has a number average
molecular weight of about 1000 to about 2300 Daltons;
wherein the monounsaturated acylating agent is maleic
anhydride,
wherein the piston-cleanliness-enhancing amount of the at
least one reaction product of a PIB and a monounsaturated
acylating agent is about 1.00 to about 2.50 wt. %, based on
the total weight of the lubricant composition, and
further wherein said lubricant composition has
a sulfur content of at or below about 0.3 wt. %,
a phosphorus content of at or below about 0.09 wt. %, and
a sulfated ash content of at or below about 1.6 wt. %,
based on the total weight of said lubricant composition.
REJECTIONS ON APPEAL
1. Claims 1—12, 18—20, 23, 28—30, 32, 33, 38—50, and 54—682 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Esche
2 In the Examiner’s Answer, the Examiner lists claims 14, 15, 52, 53, 70,
and 71 as being subject to Rejection 1. Ans. 3. However, those claims have
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(US 2004/0224858 Al, published Nov. 11, 2004) in view of Harrison et al.
(US 6,632,781 B2, issued Oct. 14, 2003).
2. Claim 1, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Esche in view of Bumop et al. (US 3,965,017, issued June
22, 1976).
3. Claims 24—27, 31,* * 3 34, and 35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Esche in view of Harrison, further in view of
Yagishita et al. (US 2004/0242434 Al, published Dec. 2, 2004).
4. Claims 36 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Esche in view of Harrison, further in view of Roby et al.
(US 2004/0087451 Al, published May 6, 2004).
ANALYSIS
Rejection 1
The Appellants argue the claims as a group. We select claim 1 as
representative of the rejected claims. The remaining claims subject to
Rejection 1 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
been canceled and are not before us in this appeal. See, e.g., App. Br. 6, 24,
30,33.
3 The Examiner’s header for Rejection 3 fails to list claim 31 as being
subject to the rejection. See Final Act. 7; Ans. 7. However, the subsequent
paragraph does list claim 31, and the Examiner’s analysis expressly
addresses claim 31. See Final Act. 7; Ans. 7. Accordingly, we consider
claim 31 to be subject to Rejection 3. See App. Br. 19 (questioning whether
claim 31 is subject to the rejection).
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rejection. Accordingly, we affirm the rejection for reasons set forth below,
in the Final Action, and in the Examiner’s Answer. See generally Final Act.
2-6, 8-11; Ans. 3-6,8-12.
In the Final Action, the Examiner finds that Esche teaches a
lubricating oil comprising each element of claim 1, including one or more
dispersants, except that Esche does not disclose the “reaction product of a
polyisobutylene and a monounsaturated acylating agent” required by claim 1
(i.e., element (d)). See Final Act. 3.4 The Examiner finds that Harrison
teaches a gear oil composition comprising a PIBSA (polyisobutenyl succinic
anhydride) dispersant, which is prepared by reacting polyisobutylene with
maleic anhydride, in concentrations that overlap those of claim 1. Id. at 3^4.
The Examiner concludes that it would have been obvious “to have used the
dispersants of Harrison in the composition of Esche, as Harrison teaches
dispersants that are useful in gear oils such as the composition of Esche.”
Id. at 4.
In the Examiner’s Answer, the Examiner elaborates on the reasoning
set forth in the Final Action, explaining that Esche itself teaches dispersants
very similar to the PIBSA dispersant of Harrison. See Ans. 9. In particular,
the Examiner finds that Esche teaches a dispersant prepared by reacting “a
maleic anhydride functionalized polyisobutylene” with a polyamine. Id.
4 The Examiner refers to the reaction product, element (d), as a dispersant.
See Ans. 3^4. This creates the potential for ambiguity because element (b)
of claim 1 is “one or more ashless dispersants.” The potential ambiguity
does not appear to be the source of any disagreement between the Appellants
and the Examiner. The Appellants also appear to agree that element (d) may
be characterized accurately as a dispersant. E.g., Reply Br. 6 (referring to
“two types of dispersants,” i.e., claim elements (b) and (d)).
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(citing Esche 111). The Examiner further finds that “Esche does not limit
its dispersants to succinimides which are imides of PIBSA, but teaches that
the dispersants can be . . . anhydrides (i.e., maleic anhydride) having a long
chain groups such as PIB.” Ans. 9 (citing Esche 1 61). In view of those
teachings, the Examiner determines that Esche “teaches derivatives of
PIBSA are useful as dispersant,” and that a person of ordinary skill “would
have found it obvious to have used the PIBSA dispersant of the oil
composition of Harrison in Esche, as Esche allows for PIBSA type
dispersants.” Ans. 9—10.
The Appellants argue that a person of ordinary skill would not have
been motivated to combine Esche and Harrison because Esche concerns
engine oils while Harrison concerns gear oils. App. Br. 9—14; Reply Br. 2—
5. The Appellants further argue that the preamble of claim 1, which recites
“[a]n internal combustion engine lubricant composition” (emphasis added),
is limiting, and that Harrison is nonanalogous art because it concerns gear
oils rather than engine oils. App. Br. 15—18; Reply Br. 2—5.
We are not persuaded by the Appellants’ arguments. The preamble of
claim 1 describes an intended use for the lubricant composition (i.e., for an
internal combustion engine). The Appellants identify various portions of the
Specification describing use of the composition in internal combustion
engines, but they fail to provide a persuasive explanation as to how or why
the preamble provides any structural or compositional limitation to the
claimed lubricant composition. See App. Br. 15. Accordingly, we are not
persuaded that the preamble of claim 1 is patentably significant to the
claimed composition. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999) (“If. . . the body of the claim fully and
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intrinsically sets forth the complete invention, including all of its limitations,
and the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no significance . . .
because it cannot be said to constitute or explain a claim limitation.”).
We likewise are unpersuaded that Harrison is nonanalogous art. See
App. Br. 16—18. The analogous art test considers the threshold question of
whether a prior art reference is ‘“too remote to be treated as prior art.’” In re
Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d
738, 741 (Fed. Cir. 1985)). Art is analogous to the claimed invention if
(1) the art is “from the same field of endeavor, regardless of the problem
addressed,” or (2) the art is “reasonably pertinent to the particular problem
with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004).
While the Appellants’ arguments principally focus on the “reasonably
pertinent” prong of the analogous art test, the Appellants appear to
characterize Harrison as being from a different field of endeavor than the
claimed invention because it pertains to gear lubricants rather than to engine
lubricants. See App. Br. 17. However, “[t]he Supreme Court’s decision in
KSR International Co. v. Teleflex, Inc. directs us to construe the scope of
analogous art broadly . . . .” Wyers v. Master Lock Co., 616 F.3d 1231, 1237
(Fed. Cir. 2010) (internal citation omitted). Here, the claimed invention and
Harrison both concern structurally similar lubricating compositions
comprising various additives, including dispersants. Moreover, both
lubricating compositions can be used in similar applications, such as
automobiles and other apparatuses that comprise, for example, engines and
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transmissions. Compare Spec. 13 (referring to automobiles) with Harrison
at 2:1—2 (same). Additionally, while Harrison at points refers to uses in
gears, e.g., Harrison at 2:3, it also broadly refers to its compositions as
“lubricant compositions” without specific regard for their intended use, e.g.,
Harrison at Title, 1:11—12 (“This invention is directed, in part, to novel
lubricant compositions.”). The same is true of the Appellants’ Specification.
E. g., Spec. 11 (“The present invention relates to lubricating oil
compositions.”). On this record, and in view of our reviewing court’s
instruction “to construe the scope of analogous art broadly,” Wyers, 616
F. 3d at 1237, we determine that Harrison and the claimed invention are from
the same field of endeavor (lubricating compositions that can be used in
automobile applications), and we decline to find that Harrison is “too remote
to be treated as prior art,” see Clay, 966 F.2d at 658.
Additionally, one aspect of the problem addressed by the inventors of
the application involved in this appeal was the selection of dispersants.
Because Harrison discloses dispersants for use in similar applications (e.g.,
automobile lubricants), we are not persuaded that Harrison is not
“reasonably pertinent” to the problem addressed by the inventors.
We likewise are not persuaded that a person of ordinary skill in the art
would not have been motivated to combine Esche and Harrison, as proposed
by the Examiner, because Esche concerns engine oils and Harrison concerns
gear oils. See App. Br. 9-14. As the Examiner points out, and as the
Appellants concede in the Reply Brief, see Reply Br. 5, Esche’s disclosure is
not limited to engine oils, as Esche expressly teaches four broad applications
for its compositions: engines, transmissions, hypoid axles, and gear boxes.
See Esche 117. We have considered the Appellants’ discussion of the
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Totten and Mortier references, on which the Appellants rely in an effort to
show that gear oils have certain differences from engine oils. See App.
Br. 11—14. However, even assuming the Appellants’ characterization of
those references to be accurate, we are not persuaded of reversible error in
the Examiner’s rejection. At best, those references support the proposition
that a person of ordinary skill in the art would not substitute a gear oil for an
engine oil. See id.
However, contrary to the Appellants’ arguments, see id. at 13, the
Examiner’s rationale does not rest on a finding that engine oils and gear oils
are interchangeable, see Ans. 8. As set forth above, the Examiner finds that
Esche teaches lubricant compositions comprising one or more dispersants
very similar to, if not the same as, the dispersant recited by element (d) of
claim 1. See Ans. 9—10; Esche 11, 61. The Examiner finds that similar
dispersants, including dispersants falling within the scope of element (d) of
claim 1, are taught by Harrison. Ans. 3—4, 9—10. The Examiner determines
that a person of ordinary skill in the art would “expect similar dispersants to
work in different oils, as the dispersant would generally perform the function
of dispersion in both oils.” Id. at 9. The Appellants’ arguments do not
persuasively rebut that finding or otherwise persuasively explain why a
person of ordinary skill in the art would not have expected Harrison’s
dispersant to function as a dispersant in Esche’s composition, particularly
given that Esche itself teaches the use of dispersants that are substantially
similar to Harrison’s dispersant.
The Examiner’s rationale essentially proposes the use of a known
dispersant (that taught by Harrison) according to its established function
(dispersion) in the lubricant compositions of Esche, which expressly teaches
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the use of similar dispersants. The use of known elements according to their
established functions typically does not result in nonobvious subject matter.
See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416—21 (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”); see also id. at 416
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
Finally, we agree with the Appellants that claim 24 does not provide
persuasive support for the Examiner’s position because claim 24 further
limits element (b) of claim 1, not element (d). See Reply Br. 5—7; Ans. 10.
Claim 24 does not suggest that bissuccinimides derived from PIBSAs fall
within the scope of element (d) of claim 1; it suggests that they fall within
the scope of the “ashless dispersants” recited by element (b). However, for
reasons set forth above, that error is harmless because it was not the
Examiner’s sole basis (or even the Examiner’s primary basis) for concluding
that a lubricant composition meeting the elements of claim 1, including
element (d), would have been obvious to a person of ordinary skill in the art.
To the extent that the Appellants raise issues concerning criticality and
unexpected results for the first time in the Reply Brief, see Reply Br. 6—7,
we decline to consider those arguments because they are untimely, and the
Appellants have not shown good cause for failing to raise them in the
opening Appeal Brief. See 37 C.F.R. § 41.41(b)(2).
On this record, a preponderance of the evidence of record supports the
Examiner’s determination that it would have been obvious to use Harrison’s
known dispersant in Esche’s lubricating compositions that call for the use of
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similar dispersants. We affirm the Examiner’s rejection of claim 1 as
unpatentable over Esche and Harrison.
Rejection 2
Similar to Rejection 1, the Examiner finds that Esche teaches a
lubricant comprising each element of claim 1 except reaction product
element (d). Ans. 6. The Examiner finds that Bumop teaches lubricating
oils comprising a PIBSA that falls within the scope of claim 1 ’s element (d).
Id. The Examiner concludes that “[i]t would have been obvious for one of
ordinary skill in the art... to have used the PIBSA of Bumop in the
lubricating composition of Esche, as Bumop teaches PIBSA suitable for use
as lubricant additives.” Id.
In the Appeal Brief, the Appellants explain that, earlier in prosecution,
when the Examiner first rejected claim 1 as unpatentable over Esche in view
of Bumop, claim 1 did not require element (d) in the amount of “about 1.00
to about 2.50 wt%,” as is currently required by claim 1. See App. Br. 19.
The Appellants argue that the Examiner’s obviousness analysis has never
been updated to address the fact that claim 1 now requires “about 1.00 to
about 2.50 wt%” of element (d). Id.
The Examiner responds by stating, with no additional analysis, that
“Esche in view of Bumop teach the limitations of claims 1,18, 19.” Ans.
11-12.
We have reviewed the record, and the Examiner fails to identify
where the “about 1.00 to about 2.50 wt%” limitation was addressed in the
context of Rejection 2. We recognize that Rejection 1, involving Esche and
Harrison, addresses that limitation. However, in Rejection 1, the Examiner
relies on Harrison for teaching the recited amount of element (d). See
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Ans. 4. Harrison is not relied on in Rejection 2. Consequently, we are
constrained to reverse the Examiner’s rejection of claim 1. We likewise
reverse the Examiner’s rejection of claims 18 and 19, which depend from
claim 1.
Rejections 3 and 4
The Appellants do not present separate arguments for the patentability
of claims subject to Rejections 3 and 4. They argue only that Yagishita
(Rejection 3) and Roby (Rejection 4) “do not cure and are not cited as curing
the deficiencies of Esche and Harrison.” App. Br. 19—20. Because, for
reasons set forth above, we are not persuaded by the Appellants’ arguments
concerning Esche and Harrison, we affirm the rejections set forth in
Rejections 3 and 4.
CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1—12, 18—20, 23, 28—
30, 32, 33, 38—50, and 54—68 under 35 U.S.C. § 103(a) as unpatentable over
Esche in view of Harrison.
We AFFIRM the Examiner’s rejection of claims 24—27, 31, 34, and
35 under 35 U.S.C. § 103(a) as unpatentable over Esche in view of Harrison,
further in view of Yagishita.
We AFFIRM the Examiner’s rejection of claims 36 and 37 under 35
U.S.C. § 103(a) as unpatentable over Esche in view of Harrison, further in
view of Roby.
We REVERSE the Examiner’s rejection of claims 1, 18, and 19 under
35 U.S.C. § 103(a) as unpatentable over Esche in view of Bumop.
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Because the rejection of every claim on appeal is affirmed under at
least one of the Examiner’s stated grounds of rejection, the Examiner’s
rejection of claims 1—12, 18—20, 23—50, and 54—68 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).
AFFIRMED
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