Ex Parte Wen et al

Board of Patent Appeals and Interferences

Dec 1, 2011

11887680 (B.P.A.I. Dec. 1, 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.
11/887,683 10/02/2007 Hongmei Wen 11698A;67097-1252PUS1 5796
54549 7590 12/02/2011
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
WEISS, PAMELA HL
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
12/02/2011 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
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.
11/887,680 10/02/2007 Hongmei Wen PA11605A;67097-1249PUS1 5795
54549 7590 12/02/2011
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
WEISS, PAMELA HL
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
12/02/2011 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
____________________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________________

Ex parte HONGMEI WEN and CLARK V. COOPER

Appeal 2011-005206
Application 11/887,680
Technology Center 1700
____________________

Ex parte HONGMEI WEN and CLARK V. COOPER

Appeal 2011-005324
Application 11/887,683
Technology Center 1700
____________________

Before: FRED E. McKELVEY, JAMESON LEE and RICHARD TORCZON,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Appeal 2011-005206 and Appeal 2011-005324 are related. We elect to 1
issue a single opinion. The subject matter on appeal is also related to that in 2
Ex parte Wen, Appeal 2011-005402 (BPAI Decided: 12 Sept. 2011) 3
Appeal 2011-005206 4
United Technologies Corporation (“United”), the real party in interest 5
(Appeal Brief ‘680, page 1), seeks review under 35 U.S.C. § 134(a) of a final 6
rejection mailed 9 March 2010. 7
Application 11/887,680 (‘680) involved in the appeal (1) was filed on 8
2 October 2007, (2) is based on PCT/US2005/039764, filed 4 November 2005, and 9
(3) claims benefit of U.S. Provisional Application 60/625,416, filed 4 November 10
2004. 11
The application has been published as U.S. Patent Application Publication 12
2009/0137436 A1. 13
Claims 1-8, 10, 12-13, 15, 17-22 and 24-28 are on appeal. Appeal Brief, 14
page 2. 15

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The Examiner relies on the following evidence. 1

Cohen

U.S. Patent 4,652,385

24 Mar. 1987

Camenzind

U.S. Patent 5,320,764

14 June 1994

Papay

U.S. Patent 5,652,201

29 July 1997
2
Cohen, Camenzind and Papay are prior art under 35 U.S.C. § 102(b). 3
We have jurisdiction under 35 U.S.C. § 134(a). 4
Appeal 2011-005324 5
United Technologies Corporation (“United”), the real party in interest 6
(Appeal Brief ‘683, page 1), seeks review under 35 U.S.C. § 134(a) of a final 7
rejection mailed 22 February 2010. 8
Application 11/887,683 (‘683) involved in the appeal (1) was filed on 9
2 October 2007, (2) is based on PCT/US2005/039765, filed 4 November 2005, and 10
(3) claims benefit of U.S. Provisional Application 60/625,416, filed 4 November 11
2004. 12
The application has been published as U.S. Patent Application Publication 13
2009/0082236 A1. 14
Claims 2, 4-5, 7, 9-27 are on appeal. Appeal Brief, page 2. 15

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In Appeal 2011-005324, in addition to the evidence relied upon in Appeal 1
2011-005206, the Examiner relies on the following evidence. 2

Katayama

U.S. Patent 4,501,678

26 Feb. 1985

Winemiller

U.S. Patent Publication
2003/0166474 A1

4 Sept. 2003
3
Katayama and Winemiller are prior art under 35 U.S.C. § 102(b). 4
We have jurisdiction under 35 U.S.C. § 134(a). 5
Findings of fact for Appeal 2011-005206 6
The following findings of fact are supported by a preponderance of the 7
evidence. 8
Additional findings as necessary may appear in the Discussion portion of the 9
opinion. 10
The invention in Appeal 2011-005206 11
The invention relates to a multifunctional lubricant additive composition 12
which is said to improve load-carrying capacity, pressure resistance, surface 13
fatigue life, and other performance characteristics of a lubricant or base oil. ‘680 14
Pub. Abstract [i.e., Abstract (57) of WO 2007/001444 A3]. 15
For example, the invention is said to provide lubricant additives 16
that are intended to enhance the performance characteristics, such as scuffing 17
(scoring) resistance and surface-fatigue life of a base stock or fully formulated 18

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lubricant, including anti-wear (AW), extreme pressure (EP) and friction modifying 1
(FM) compositions. ’680 Specification, page 3:18-22. 2
The composition includes four components: 3
(a) an alkyl or aryl neutral phosphate, 4
(b) a long-chain organic partial ester, 5
(c) an aryl or alkyl phosphite, and 6
(d) a phenol compound. 7
’680 Pub. Abstract. 8
An example of component (a), the alkyl or aryl neutral phosphate, is 9
tricresyl phosphate, a known compound. See ’680 Specification, page 11:5 and 10
page 14:9. 11
An example of component (b), the long-chain organic partial ester, is 12
glycerol monooleate, a known compound. See ’680 Specification, page 11:10 and 13
page 14 (compound (b) in Formulation #2). 14
An example of component (c), the aryl phosphite, is tris-(2,4-di-15
tertiary-butyl-phenyl) phosphite, a known compound. See ’680 Specification, 16
page 11:15-16 and page 14 (compound (c) in Formulation #2). 17
An example of component (d), the phenol, is tetrakis-(methyline-3,5-ditert-18
butyl-4-hydroxy hydrocinnamate) methane, a known compound. See ’680 19
Specification, page 11: 21-22 and page 14 (compound (d) in Formulation #2). 20
We construe the italicized language “methyline” to mean “methylene.” 21
See (1) page 12:26 of the ‘683 Specification and page 14 of the ‘680 Speicfication 22

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(compound (c)) and (2) compare In re Oda, 443 F.2d 1200, 1206 (CCPA 1971) 1
(the error is known and it is also known how to correct it). 2
‘680 Claims 3
Claims 1-8, 10, 12-13, 15, 17-22 and 24-48 are on Appeal. 4
Because of errors in the claims of the Claims Appendix, we have not 5
reproduced any claim. 6
The rejections 7
There are three pending rejections. 8
Claims 1-8, 10, 12-13, 15, 17-22 and 24-28 are rejected under 35 U.S.C. 9
§ 103(a) as unpatentable over Camenzind and Cohen. ’680 Answer, 3. 10
Claims 1-8, 10, 12-13, 15, 17-22 and 24-28 also are rejected under 35 U.S.C. 11
§ 103(a) as unpatentable over Papay and Cohen. ’680 Answer, page 7. 12
Claims 1-8, 10, 12-13, 15, 17-22 and 24-28 also are provisionally rejected 13
on the ground of non-statutory double patenting over Claims 2-4,5, 7 and 9-27 of 14
United’s copending application 11/877,683 (involved in Appeal 2011-5324 15
decided concurrently with this appeal). ’680 Answer, page 11. 16
Prior art 17
The prior art will reveal that United is using compounds (a) through (d) in 18
lubricants for their known purpose. 19
Camenzind 20
Camenzind describes compounds which are said to be particularly suitable 21
as multipurpose additives for lubricants. Col. 1:66 to col. 2:2. 22

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According to Camenzind, in addition to being antiwear and anticorrosion 1
agents and having antioxidant action, the compounds also are said to have 2
properties which render them usable as additives in high pressure protection. 3
Col. 2:2-5. 4
The compounds may be used in combination with other additives, including 5
anticorrosion agents, rust inhibitors, antioxidants, high pressure agents and 6
antiware additives. Col. 6:29-35. 7
An example of an “antiwear additive” (col. 10:41) is tricresyl phosphate 8
(col. 10:45), which corresponds to United’s compound (a). 9
An example of a “rust inhibitor” (col. 9:58) is glycerol monooleate 10
(col. 10:24), which corresponds to United’s compound (b). 11
Camenzind also describes the use of phenol antioxidants. Col. 6:38-54 and 12
col. 7:1-26. Camenzind, while describing phenols, does not describe any phenol 13
within the scope of United’s compound (d). 14
The Examiner found that Camenzind differs from United’s claimed 15
invention in that Camenzind does not describe (1) an aryl phosphite within the 16
scope of United’s compounds (c), (2) a phenol within the scope of United’s 17
compound (d) or (3) possibly the claimed amounts of compounds (a) to (d) to be 18
used in the lubricant. Answer, page 5. 19
Cohen 20
Cohen describes lubricating oils having additives. Col. 1:58-62. 21
The additives include phosphites and hindered phenols. Col. 1:63-68. 22

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Cohen specifically describes the use of a mixture of (1) tris(2,4-di-tertiary-1
butyl-phenyl) phosphite (corresponding to United’s compound (c)) and (2) tetrakis-2
(methylene-3,5-di-tert-butyl-4-hydroxy hydrocinnamate) methane (corresponding 3
to United’s compound (d)). See col. 5:51 (1. Hydraulic Oil); col. 5:59 (2. Steam 4
Turbine Oil); and col. 6:22 (4. Heat Transfer Oil). 5
One skilled in the art is taught that the Cohen additives “are used in 6
antioxidant amounts in … lubricating compositions.” Col. 4:3-4. General and 7
preferred amounts are set out in Cohen. Col. 4:4-7. 8
One skilled in the art also is taught that the Cohen additives may be used in 9
combination with other additives, including rust inhibitors and extreme pressure 10
additives. Col. 5:31-36. 11
Cohen points out that the additives are well-known in the art and that “the 12
person skilled in the art will be aware of the need to select thermally stable 13
additives suitable to the end-use application of the particular lubrication product.” 14
Col. 5:36-41. 15
Rebuttal evidence 16
While the Specification and Drawing discuss data said to show alleged 17
improvements resulting from United’s invention, United does not rely on the data 18
in its appeal brief. We therefore need not consider the data. 19
Discussion 20
We agree with the Examiner that the claimed subject matter would have 21
been obvious within the meaning of § 103(a) over Camenzind and Cohen. 22

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The prior art reveals that United has used known additives in a lubricant to 1
achieve an expected result—a lubricant having properties associated with the 2
additives. KSR Int’l Inv. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (the 3
combination of known materials according to known methods is likely to be 4
obvious when it does not more than yield predictable results). 5
A more detailed analysis of the obviousness issues is best addressed by 6
responding to arguments made by United in its Appeal Brief and Reply Brief. 7
The guidance argument 8
United maintains that “[t]he mere fact that particular additives exist does not 9
provide enough guidance among all of the possible combinations ….” ’680 Brief, 10
page 6. Overlooked by United is that the prior art additives used by United are 11
known and are known to be used in lubricants. Their use for United’s purpose is in 12
the public domain. Graham v. John Deere Co., 383 U.S. 1, 6 (1966); In re Kubin, 13
561 F.3d 1351, 1357-58 (Fed. Cir. 2009); In re Translogic Tech., Inc., 504 F.3d 14
1249, 1259 (Fed. Cir. 2007). In its Appeal Brief, United does not rely on any 15
evidence to show an unexpected result. Accordingly, United has no basis upon 16
which to remove from the public domain the use of known additives for their 17
known purpose in lubricants. 18
United insists that “guidance” is needed because Camenzind states 19
(col. 1:29-32): 20
However, in many cases, the various types of additives impede one 21
another in their action; thus, for example, many corrosion inhibitors 22
reduce the action of the high pressure additives. 23

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Camenzind goes on to say that “[t]his antagonism [i.e., additives impeding one 1
another,] can be overcome by using a multifunctional additive.” Col. 1:33-34. 2
Notwithstanding its “impede” statement, Camenzind reveals that other 3
additives can be used in its invention to improve “fundamental properties still 4
further.” Col. 6:29-35. Camenzind goes on to identify (1) antiwear phosphates 5
(including tricresyl phosphate (col. 10:45)—described by United as being used in 6
Formulation #2), (2) rust inhibitors (including glycerol monooleate (col. 10:24)—7
described by United as being used in Formulation #2); and (3) a wide variety of 8
phenols (col. 6:39 et seq.). Cohen reveals that combinations of additives, including 9
(1) tris-(2,4-di-tertiary-butyl-phenyl) phosphite (corresponding to United’s 10
compound (c)) and (2) tetrakis-(methylene-3,5-ditert-butyl-4-hydroxy 11
hydrocinnamate) methane (corresponding to United’s compound (d)) can be used 12
in combination with other additives (col. 5:31-36). Cohen further reveals the skill 13
in the art as follows (col. 5:36-41): 14
All of these materials [i.e., additives,] are well known in the art of 15
formulating lubricating oils, and the person skilled in the art will be 16
aware of the need to select thermally stable additives suitable to the 17
end-use application of the particular lubrication product. 18
The prior art establishes that one with ordinary skill in the art has 19
considerable ability to determine whether a first additive can be used in 20
combination with a second additive. The person of ordinary skill in the art is not 21
an “automaton.” KSR, at 421. Moreover, a fair reading of Camenzind is not that 22
mixtures of additives “will not work.” Rather, Camenzind is saying that if one 23

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skilled in the art uses a mixture of additives, one skilled in the art would need to 1
consider whether a particular mixture reduces the additive effect of any of the 2
individual additives. Based on Camenzind, there is no reason to expect that one 3
skilled in the art would use a combination of additives which would self-defeating. 4
In addition to our reasoning, we also refer the reader to the following 5
portions of the ’680 Answer: page 4:19 to page 6:5 and page 13:1 to page 15:5. 6
The amounts of additives 7
There is considerable discussion in this record about whether the prior art 8
teaches the use of the amounts of additives claimed by United. United admits 9
that “[t]he units of measurement [of the amounts of additives] are different 10
between the claims and the references and therefore cannot be directly compared.” 11
’680 Appeal Brief, page 6. The Examiner acknowledges the difference. 12
’680 Answer, page 16. See also ’680 Appeal Brief, pages 6-7 for more discussion 13
concerning mole ratios v. weight percent ratios. 14
The claims talk in terms of “mole” ratios. The prior art talks in terms of 15
weight percent ratios. Cohen, col 4:3-7; Camenzind, col. 5:12-19. 16
The Examiner explains why at least some of the prior art weight ratios are 17
believed to be in the range of the claimed mole ratios. ’680 Answer, pages 15-17. 18
United takes issue arguing that “the Examiner has not established that the amounts 19
of the additives in the cited references overlap the claimed amounts.” ‘680 Reply 20
Brief, page 3. United also argues that one skilled in the art could not “discover the 21
claimed amounts as a matter of routine experimentation ….” ’680 Reply Brief, 22
page 3. 23

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The Examiner also observed that United has not relied on evidence of an 1
unexpected result based on any “criticality” of the claimed ratios. ’680 Answer, 2
page 18. 3
The Examiner has not made an anticipation rejection under § 102(b). 4
Rather, the rejection is based on obviousness under § 103(a). 5
It is unfortunate that United chose mole ratios to claim amounts albeit 6
United had every right to do so. However, use of mole ratios vis-à-vis weight 7
percentages often can complicate an evaluation of whether the mole and weight 8
percentage ratios are the same. United’s argument about the mole ratios, and 9
whether the prior art does not describe or overlap the claimed ratios, while not 10
irrelevant overlooks the state of the art. The Examiner found that one skilled in the 11
art, based on Camenzind and Cohen, would use additives “to improve the 12
fundamental properties of the [lubricant] composition[s].” ’680 Answer, page 18. 13
The Examiner’s finding is supported by the evidence. Cohen reveals that its 14
stabilizers are used in antioxidant amounts in lubricating compositions. Col. 4:3-4. 15
In other words, one skilled in the art will use an amount which gets an intended 16
result. Camenzind reveals that one skilled in the art would have been expected to 17
use “other additives” in lubricants in amounts which “improve their fundamental 18
properties ….” Col. 6:29-35. Again, one skilled should use amounts which 19
produce favorable results. Both Camenzind and Cohen imply that the level of 20
ordinary skill in the art is high enough to make such decisions without further 21
guidance. 22

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Based on the prior art before us, our view of the appeal is that there is 1
nothing critical about the claimed mole ratios and that one skilled in the art would 2
have been able to determine appropriate amounts of additives to be present in the 3
lubricant compositions. No unexpected result is relied upon and no particular 4
property is recited in the claims. 5
Other arguments 6
We have considered United’s remaining arguments with respect to the 7
rejection based on Camenzind and Cohen and find none that warrant reversal of the 8
Examiner’s rejections in Appeal 2011-005206. Cf. Hartman v. Nicholson, 9
483 F.3d 1311, 1315 (Fed. Cir. 2007). 10
Other rejections 11
In view of our disposition of the rejection based on Camenzind and Cohen, 12
we do not find it necessary to reach the rejection based on Papay and Cohen or the 13
provisional double patenting rejection. 14
Decision in Appeal 2011-005206 15
Upon consideration of Appeal 2011-005206, and for the reasons given 16
herein, it is 17
ORDERED that the decision on the Examiner rejecting claims 1-8, 18
10, 12-13, 15, 17-22 and 24-28 over Camenzind and Cohen is affirmed. 19
FURTHER ORDERED that the appeal as to the rejection based on 20
Papay and Cohen is dismissed as moot. 21
FURTHER ORDERED that the appeal as to the rejection based on 22
provisional double patenting is dismissed as moot. 23

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FURTHER ORDERED that no time period for taking any subsequent 1
action in connection with Appeal 2011-005206 may be extended under 37 C.F.R. 2
§ 1.136(a)(1)(iv). 3
AFFIRMED 4

Findings of fact in Appeal 2011-5324 5
The following findings of fact are supported by a preponderance of the 6
evidence. 7
Additional findings appear in the findings for Appeal 2011-005206 and in 8
the Discussion portion below. 9
The invention in Appeal 2011-005324 10
The invention relates to a multifunctional lubricant additive composition 11
which is said to improve load-carrying capacity, pressure resistance, surface 12
fatigue life, and other performance characteristics of a lubricant or base oil. 13
‘683 Specification, page 1:28 to page 2:3. 14
For example, the invention is said to provide lubricant additives 15
That are intended to enhance the performance characteristics, such as scuffing 16
(scoring) resistance and surface-fatigue life of a base stock or fully formulated 17
lubricant, including anti-wear (AW), extreme pressure (EP), friction modifying 18
(FM) and surface fatigue life (SFL) modifying compositions. ’683 Specification, 19
page 3:23-28. 20
The composition includes four components (a) through (d), with (c) having 21
components (c1) and (c2): 22

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(a) a long-chain ester, 1
(b) an alkyl neutral phosphate or an aryl neutral phosphate, 2
(c) an extreme pressure additive consisting of 3
(c1) an aryl or alkyl phosphite, and 4
(c2) a phenol compound, and 5
(d) an alkylthiocarbamoyl compound. 6
’683 Specification, page 4:27; page 5:5-6; page 5:11-12; page 6:3 and page 7:5. 7
The difference between the ‘680 invention and the ‘683 invention is the 8
presence of compound (d)—the alkylthiocarbamoyl compound—in the ‘683 9
claims. 10
An example of component (a), the long-chain ester is glycerol monooleate. 11
Glycerol monooleate is a known compound. ’683 Specification, 12:8-9 and 12
page 17:Table 2.1 13
An example of component (b), the alkyl or aryl neutral phosphate is tricresyl 14
phosphate. Tricresyl phosphate is a known compound. ’683 Specification, 15
page 12:14 and page 17, Table 2.1 16
An example of component (c1), the aryl phosphite, is tris-(2,4-di-tertiary-17
butyl-phenyl) phosphite, a known compound. ’683 Specification, page12:21and 18
page 17:Table 2.1. 19
An example of component (c2), the phenol, is tetrakis-(methylene-3,5-ditert-20
butyl-4-hydroxy hydrocinnamate) methane, a known compound. ’683 21
Specification, page 12:25-26 and page 17:Table 2.1. 22

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An example of component (d) is “tetra-n-butylthiuram.” ’683 Specification, 1
page 17:Table 2.1. The complete name is tetra-n-butylthiuram disulfide. The 2
compound is a known compound. Id. 3
The claims 4
The claims on appeal are Claims 2, 4-5, 7 and 9-28. 5
Because of errors in the claims of the Claims Appendix, we have not 6
reproduced any claim. 7
The rejections 8
There are three pending rejections. 9
Claims 2, 4-5, 7, and 9-28 are rejected under 35 U.S.C. § 103(a) as 10
unpatentable over Camenzind and Cohen and Winemiller. ’683 Answer, 4. 11
Claims 2, 4-5, 7, and 9-28 also are rejected under 35 U.S.C. § 103(a) as 12
unpatentable over Papay and Cohen and Katayama. ’683 Answer, page 9. 13
Claims 2, 4-5, 7, 9-21, 25-26 and 28 also are provisionally rejected on the 14
ground of non-statutory double patenting over Claims 1-23 of United’s copending 15
application 11/877,680 (involved in Appeal 2011-5206 decided concurrently with 16
this appeal). ’683 Final Rejection, page 14; the Answer states simply that the 17
double patenting rejection is “provisional.” ’683 Answer, page 14. 18
Prior art 19
The prior art will reveal that United is using compounds (a) through (d), 20
including compounds (c1) and (c2), in lubricants for their known purpose 21
We refer the reader to our prior discussion in Appeal 2011-5206 of 22
Camenzind and Cohen. 23

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Winemiller 1
The Examiner cited Winemiller to establish that various sulfur 2
compounds (d), including “bis-(dibutyl)thiocarbamoyl” are known lubricant 3
additives. Winemiller ¶ 0051:7. 4
Katayama 5
While we do not reach the rejection based on Katayama, we will simply 6
observe that Katayama confirms Winemiller. See, e.g., Col. 1:46-63. 7
Rebuttal evidence 8
The Specification and Drawings discuss data said to show alleged 9
improvements resulting from United’s invention. According to United, the subject 10
matter of ‘683 claim 28 is separately patentable because it calls for a load-carrying 11
capacity factor of 1.29 with regard to average scuffing relative to standard 12
MIL-PRF-23699 oil 13
Discussion 14
We agree with the Examiner that the claimed subject matter would have 15
been obvious within the meaning of § 103(a) over Camenzind and Cohen and 16
Winemiller. 17
The prior art reveals that United has used known additives in a lubricant to 18
achieve an expected result—a lubricant having properties associated with the 19
additives. KSR Int’l Inv. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (the 20
combination of known materials according to known methods is likely to be 21
obvious when it does not more than yield predictable results). 22

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The “guidance” and “amounts of ingredients” arguments made in Appeal 1
2011-005324 are essentially the same as those made in Appeal 2011-5206. We 2
have already addressed those arguments and found them to unconvincing. We also 3
refer the reader to the following portions of the ’683 Answer: page 4:3 to page 7:3 4
[where the Examiner probably meant to refer to ¶ 0051 not ¶ 0052]; page 7:13-22; 5
and page 15:12 to page 19:9. 6
United has not contested the Examiner’s use of Winemiller in combination 7
with Camenzind and Cohen. Accordingly, there is no reason to disagree with the 8
Examiner’s application of Winemiller in reaching a conclusion of obviousness. 9
Claim 28 10
According to United, Claim 28 is separately patentable. ’683 Appeal Brief, 11
page 7. 12
United’s position is based on experimental data reported in the ’683 13
Specification at page 17:Table 2.2. When compared to Exxon-Mobil Jet Oil II, 14
United asserts that its lubricant has better average scuffing properties. Table 2.2. 15
The Examiner found the data unconvincing. ‘683 Answer, pages 14-15. 16
‘683 Claim 28 does not recite any proportions of additives. The base oil is not 17
specified. In other words, showing in Table 2.2 is not commensurate in scope with 18
the breadth of the claim. 19
We find it difficult on this record to disagree with the Examiner’s findings 20
with respect to the data. 21

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Claim 26 1
United maintains that ‘683 Claim 26 is separately patentable. Claim 26 2
recites a ratio of 2 : 1 : 1 : 0.5 for the antiwear additive, extreme pressure additive, 3
friction modifier, and surface life fatigue modifier. ’683 Appeal Brief, page 15. 4
Nothing in the record establishes that the claimed ratio leads to any unpredictable 5
result. 6
Other arguments 7
We have considered United’s remaining arguments with respect to the 8
rejection based on Camenzind and Cohen and Winemiller and find none that 9
warrant reversal of the Examiner’s rejections in Appeal 2011-005324. 10
Cf. Hartman v. Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 11
Other rejections 12
In view of our disposition of the rejection based on Camenzind and Cohen 13
and Winemiller, we do not find it necessary to reach the rejection based on Papay 14
and Cohen or the provisional double patenting rejection. 15
Decision in Appeal 2011-005324 16
Upon consideration of Appeal 2011-005324, and for the reasons given 17
herein, it is 18
ORDERED that the decision on the Examiner rejecting claims 2. 4-5, 19
7 and 9-28 Camenzind and Cohen and Winemiller is affirmed. 20
FURTHER ORDERED that the appeal as to the rejection based on 21
Papay and Cohen and Winemiller is dismissed as moot. 22

Appeal 2011-005206, Application 11/887,680
Appeal 2011-005324, Application 11/887,683

20

FURTHER ORDERED that the appeal as to the rejection based on 1
provisional double patenting is dismissed as moot. 2
FURTHER ORDERED that no time period for taking any subsequent 3
action in connection with Appeal 2011-005324 may be extended under 37 C.F.R. 4
§ 1.136(a)(1)(iv). 5
AFFIRMED 6
7

Appeal 2011-005206, Application 11/887,680
Appeal 2011-005324, Application 11/887,683

21

McKELVEY, Administrative Patent Judge, additional views. 1
The principal opinion does not reproduce any claim from the Claims 2
Appendix of either Appeal Brief. 3
In Appeal 2011-005206, the claims in the Claims Appendix of the 4
‘680 Appeal Brief do not seem to be the same as the claims in an amendment filed 5
on 29 December 2009. The ‘680 claims also contain numerous errors. 6
In Appeal 2011-005324, the ‘683 claims contain numerous errors. 7
Notwithstanding the errors, the panel has been able to resolve the appeals on 8
the merits. The inaccuracy of the claims in the Claims Appendix and the errors 9
complicated the resolution of these appeals. Nevertheless, the claims on appeal are 10
sufficiently clear to determine that some embodiments within the scope of the 11
claims would have been obvious. Cf. Ex parte Tanksley, 26 USPQ2d 1384,1387 12
(BPAI 1991) (Board was able “to make a sufficiently reasonable interpretation of 13
at least some embodiments within … [the] claims to serve administrative economy 14
and efficiency by deciding … [a § 103] rejection …”). 15
By way of example, at least the following errors are noted. 16
(1) 17
In 680’ Claim 1, there is no antecedent for “the additive” in the 18
identification of (1) the alkyl groups when the neutral phosphate is alkyl or 19
(2) the aryl groups when the aryl neutral phosphate is aryl. The language in ‘680 20
Claim 1 which reads “an aryl phosphate or an alkyl neutral phosphate” should read 21
“an additive selected from an aryl neutral phosphate or an alkyl neutral phosphate 22
present ....” 23
1
2
3
4
5
6
7
8
9
10
11
12
13
14

Appeal
Appeal

T
In
phosphi
A
the benz
which i
It
A
2011-0052
2011-0053
he same p
680’ Cla
te has the

CjH2j
ccording t
ene rings
s a substitu
is not app
similar pr
06, Appli
24, Appli
roblem ex
im 1, ment
formula:

wherein R
+1 alkyl gr
o the form
represente
ted benze
arent how
oblem exi
cation 11/8
cation 11/8
ists in ‘680
ion is mad
[Formu
6, R7, R8,
oups [sic—
ula, the ph
d as:
ne ring (an
Formula I
sts in ‘680
87,680
87,683

22
Claim 21
(2)
e of “the a
la] (III)
R9, R10, a
group].
osphite ha
aryl).
II can be a
Claim 21

.
ryl or alky
nd R11 are
s to be ary

n “alkyl”
and ‘683
l phosphi
each indep
l due to th
phosphite
Claims 25
te”. The

endently
e presenc
.
and 28.
a
e of

Appeal 2011-005206, Application 11/887,680
Appeal 2011-005324, Application 11/887,683

23

(3) 1
In ‘680 Claim 1, R14 cannot be a normal CoH2o+1 alkyl group. Rather, R14 is 2
a normal ─CoH2o─ divalent alkylene group. 3
A similar problem exists in ‘680 Claim 21 and ‘683 Claims 25 and 28. 4
(4) 5
At the end of ‘680 Claim 21, the following appears (italics added): 6
wherein the ratio of the amount by mole based on the total amount of 7
lubricant of an aryl or alkyl neutral phosphate , that of a long-chain 8
ester, and that of an aryl or alkyl phosphite is about 0.5 : 1.0 : 0.45. 9
The term “phosphate” should read “phosphite.” 10
The 0.5 : 1.0 : 0.45 ratio limitation is confusing. Both the Amendment filed 11
29 December 2009 and the ‘680 Claims Appendix refer to a phosphate. But, the 12
ratio set out in ‘680 Claim 21 may be a ratio of lubricant to phosphite. See ‘680 13
Specification, page 11:12-13 and ¶ 0040 of the Specification as published. 14
Alternatively, the ratio may refer to a ratio of compound (b) to compound (c) to 15
compound (d). See Formulation #2 on page 14 of the Specification and ¶ 0048 of 16
the Specification as published. 17
While not material to the claims, the ‘683 Specification also mentions a 18
Formulation #1, but its composition is not identified. 19
(5) 20
It would appear that there is an inconsistency in the use of R1 and R2 in the 21
long-chain ester formula in Claims 25 and 28 of ‘683 vis-à-vis the R1 and R2 used 22

Appeal 2011-005206, Application 11/887,680
Appeal 2011-005324, Application 11/887,683

24

to identify the meaning of R1 and R2. All of the R’s should be superscripts or 1
subscripts. 2
(6) 3
The reference to “the alkyl or aryl phosphate” in ‘683 Claim 25 and 28 are 4
not correct. Due to the presence of the P─(O─)3 group, the phosphorus compound 5
shown in Formula III is a phosphite—not a phosphate. A phosphate would have 6
the group: 7
O 8
║ 9
─O─P─O─ 10
│ 11
O 12
│. 13
14
See also “Claim Objections “on page 2 of the Final Rejection. 15
(7) 16
The R12 groups in the formula of the phenol in ‘683 Claims 25 and 28 are 17
not alkyl groups having the formula ─CpHp+1. Rather, they are alkylene groups 18
having the formula ─CpH2p─. 19
(8) 20
The R14 group in Formula (V) of ‘683 Claims 25 and 28 is not an alkyl 21
group; rather it is alkylene group. 22
23
ack 24