10536202 (B.P.A.I. Mar. 3, 2011)

Ex Parte Wedlock

Board of Patent Appeals and InterferencesMar 3, 2011

10536202 (B.P.A.I. Mar. 3, 2011)

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. 10/536,202 12/22/2004 David John Wedlock TS7614US 6585 7590 03/03/2011 Jennifer D Adamson Shell Oil Company Intellectual Property PO Box 2463 Houston, TX 77252-2463 EXAMINER CAMPANELL, FRANCIS C ART UNIT PAPER NUMBER 1774 MAIL DATE DELIVERY MODE 03/03/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DAVID JOHN WEDLOCK ____________________ Appeal 2009-011468 Application 10/536,202 Technology Center 1700 ____________________ Before CHARLES F. WARREN, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 I. STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-12 and 17-28. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011468 Application 10/536,202 2 We AFFIRM. Appellant’s invention relates to a lubricant composition comprising a Fischer-Tropsch derived base oil and one or more additives. The claims are directed to the composition (see Claim 1) and a method of using the composition to lubricate a gasoline direct injection engine (see Claim 17). Claims 1 and 17 are reproduced below: 1. A lubricant composition suitable for use in an automobile comprising: a low viscosity Fischer Tropsch derived base oil component having a kinematic viscosity at 100 °C of less than 7 cSt; a high viscosity Fischer Tropsch derived base oil component having a kinematic viscosity at 100 °C of more than 18 cSt; and, one or more additives. 17. A method comprising: lubricating a gasoline direct injection engine with a lubricant comprising: a low viscosity Fischer Tropsch derived base oil component having a kinematic viscosity at 100 °C of less than 7 cSt; a high viscosity Fischer Tropsch derived base oil component having a kinematic viscosity at 100 °C of more than 18 cSt; and, one or more additives. Appeal 2009-011468 Application 10/536,202 3 The Examiner maintains, and Appellant seeks review of, the following rejections: 1. The rejection of claims 1-3, 6-8, 17-19, 22-24, and 26-27 under 35 U.S.C. § 103(a) as unpatentable over Alexander (US 5,321,172; issued Jun. 14, 1994) in view of Richter (US 6,315,891 B1; issued Nov. 13, 2001); 2. The rejection of claims 1, 9, 10-12, 17, and 24-28 under 35 U.S.C. § 103(a) over Alexander in view of Degnan (US 6,190,532 B1; Feb. 20, 2001); and 3. The rejection of claims 4, 5, 20, and 21 under 35 U.S.C. § 103(a) over Alexander and Richter, and further in view of Tanaka (US 6,281,173 B1; Aug. 28, 2001). II. DISPOSITIVE ISSUE Appellant contends that one of ordinary skill in the art would not have sought to combine the teachings of Alexander and Richter to arrive at the present invention because the combination would produce an oil suitable for two-cycle engines and not an oil suitable for use in an automobile, and particularly not for use in a gasoline direct injection engine (Br. 3). The Examiner agrees that the combination suggests a lubricating oil for use in a two-cycle internal combustion engine (Ans. 4). The Examiner’s position, however, is that the suggested oil for a two-cycle engine meets the requirements of the composition of claim 1 and it would have been obvious to lubricate a gasoline direct injection engine using the oil in accordance with the method of claim 17. Appeal 2009-011468 Application 10/536,202 4 The issue is: Do the claims, when properly interpreted, encompass the combination both the Appellant and the Examiner find is suggested by the combination of Alexander and Richter? We answer this question in the affirmative. III. DISCUSSION As pointed out by the Examiner, claim 1 is directed to a composition (Ans. 7). As such, the recitation “for use in an automobile” is merely an intended use for the composition. “[M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969). This is because a claim to a composition is directed to the composition itself and must be distinguished from the prior art on the basis of the structure and chemical components of the composition. Whether the lubricating oil suggested by the references is used in an automobile or in, for instance, a motorcycle, the composition of the oil remains the same. Moreover, the Examiner finds that “the term automobile includes devices that use two cycle engines.” (Final 2 at ¶ 2.) Appellant has not disputed this finding. The evidence of record, therefore, supports a determination that the lubricant suggested by the combination of Alexander and Richter for use in a two cycle engine is “suitable for use in an automobile” as required by claim 1. With regard to method claim 17, which requires a step of “lubricating a gasoline direct injection engine with a lubricant” of the claimed composition, the Examiner finds that “two cycle engines may be direct injection engines.” (Final 2 at ¶ 3; Ans. 8.) Appellant does not dispute this Appeal 2009-011468 Application 10/536,202 5 finding (Br. 3). Based on this undisputed finding, we determine the evidence supports the Examiner’s conclusion that one of ordinary skill in the art would have found it obvious to use the two-cycle lubricant suggested by the combination of Alexander and Richter in a gasoline direct injection two- cycle engine (Final 4; Ans. 4). Appellant relies upon the same arguments against the rejection over Alexander and Degnan as have been addressed above. Further Appellant does not advance any further argument against the rejection over Alexander, Richter and Tanaka. Therefore, no further issues are presented for our discussion. IV. CONCLUSION On the record before us, we sustain the rejections maintained by the Examiner. V. DECISION The decision of the Examiner is affirmed. VI. TIME PERIOD FOR RESPONSE 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 cam JENNIFER D ADAMSON SHELL OIL COMPANY INTELLECTUAL PROPERTY PO BOX 2463 HOUSTON, TX 77252-2463