Ex Parte Wen et al

Board of Patent Appeals and Interferences

Sep 12, 2011

11887684 (B.P.A.I. Sep. 12, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/887,684 10/02/2007 Hongmei Wen PA11679A;67097-1250PUS1 6968
54549 7590 09/13/2011
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
09/13/2011 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HONGMEI WEN and CLARK V. COOPER
____________________

Appeal 2011-005402
Application 11/887,684
Technology Center 1700
____________________

Before: FRED E. McKELVEY, JAMESON LEE, and SALLY C. MEDLEY,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
United Technologies Corporation (“United”), the real party in interest, seeks 1
review under 35 U.S.C. § 134(a) of a final rejection mailed 9 March 2010. 2
The application was filed on 2 October 2007. 3
The application is based on PCT/US2005/039,766, filed 4 November 2005, 4
and claims benefit of U.S. Provisional Application 60/625,416, filed 4 November 5
2004. 6
The application was published as U.S. Patent Publication 2008/0312116. 7
Claims 1-21 and 25-28 are in the application. Brief, page 2. 8
Claims 1-21 have been rejected. 9
Claims 25-28 are discussed later in this opinion. 10
The Examiner relies on the following evidence. 11
12
Katayama U.S. Patent 4,501,678 26 Feb. 1985
Cohen U.S. Patent 4,652,385 24 Mar. 1987
Igarashi U.S. Patent 5,786,307 28 July 1998
Kamimura U.S. Patent 6,465,400 B1 15 Oct. 2002
13
Katayama, Cohen, Igarashi and Kamimura are prior art under 35 U.S.C. 14
§102(b) vis-à-vis the filing date of United’s U.S. Provisional Application. 15
United cites and relies on the following additional evidence (Brief, page 5): 16
Camenzind U.S. Patent 5,320,764 14 June 1994
17
Camenzind is prior art under 35 U.S.C. § 102(b). 18

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We have jurisdiction under 35 U.S.C. § 134(a). 1
Findings of fact 2
The following findings of fact are supported by a preponderance of the 3
evidence. 4
Additional findings as necessary may appear in the Discussion portion of the 5
opinion. 6
The invention 7
The invention relates to a lubricant additive composition. Specification, 8
page 3:24. 9
The lubricant additive is said “to enhance the performance characteristics of 10
a lubricant base stock or fully formulated lubricant, including anti-wear (AW), 11
extreme pressure (EP), friction modifying (FM) and surface fatigue life (SFL) 12
modifying compositions.” Specification, page 3:25-28. 13
As will become apparent from Claim 1, reproduced below, the lubricant 14
additive includes four components: 15
Compound (a)—a molybdenum compound (Specification, page 5, 16
Formula (I)); 17
Compound (b)—a zinc dithiophosphate compound (Specification, 18
page 5, Formula (II)); 19
Compound (c)—a phosphite compound (Specification, page 6, 20
Formula (III); and 21
Compound (d)—a compound having at least one alkylthiocarbamoyl 22
group (Specification, page 6; Formula (IV)). 23

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The total amount of compounds (a) through (d) said to be needed is equal to or 1
less than about 15% by mole, based on the amount of lubricant. Specification, 2
page 7:5-7. 3
A Formulation #4 is described as containing the following compounds: 4
(Specification, page 13): 5
(a) Molybdenum, bis(ditridecylcarbamodithioato) di-u-oxodioxo-di-6
sulfurized (italics added); 7
(b) Zinc O,O-dibutylphosphorodithioate; 8
(c) Tris-(2,4-di-tertiary-butyl-phenyl) phosphite; and 9
(d) Tetra-n-butylthiuram. 10
Use of 0.5 mole % of each of a combination of (a) through (d) is said to have 11
“increased the load-carrying capacity of ... Hatco HXL-7994 oil by about 3.94 12
times ....” Specification, page 13:8-9. According to United, 3.94 times “is superior 13
to conventional oils such as Exxon-Mobil Jet Oil II (a standard version of 14
MIL-PRF-23699, a 5 cSt gas turbine engine oil), which [is said to have] ... 15
excellent lubricant performance as compared to other brands and versions of 16
MIL-PRF-23699 oil”. 17
Results, based on what we assume is actual experimentation, are shown in 18
United’s drawing, reproduced below. 19

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1
As can be seen in the figure, the Hatco HXL-7994 oil 10 [black 2
squares â– ] had an average scuffing (scoring) failure load stage of 3
about 5.7 (arrow [↑] 11), the Exxon-Mobil Jet Oil II 20 [black 4
diamonds ♦] had an average scuffing (scoring) failure load stage of 5
about 19.2 (arrow 21), and Formulation #4 30 [black circles ●] had an 6
average scuffing (scoring failure load stage of about 22.5 (arrow 31), 7
which [is said to indicate] ... that Formulation #4 has a load carrying 8
capacity about 3.94 [22.5 divided by 5.7 = 3.94] times greater than 9
that of the Hatco HXL-7994 oil. 10
Specification, page 13:13 to page 14:4. 11
Not stated in the Specification is the nature of any additives in Hatco 12
HXL-7994 oil or Exxon-Mobil Jet Oil II. 13

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Claims on appeal 1
Claim 1, which we reproduce from the Claim Appendix of the Appeal Brief, 2
reads: 3
A multifunctional lubricant additive composition comprising: 4
(a) a molybdenum compound represented by the general formula 5
[(I)]: 6
7
wherein X1 is an oxygen or sulfur atom and R3 and R4 are each 8
independently a CnH2n+1 alkyl group, wherein n is an integer of about 9
2 ≤ n ≤ 10, and m is an integer of about 0 ≤ m ≤ 4; 10
(b) a secondary zinc dithiophosphate compound represented by the 11
general formula [(II)]: 12
13
wherein R3, R4, R5, and R6 are each a ChH2h+1 secondary alkyl group 14
represented by the formula: 15

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1
wherein h is an integer of from about 3 ≤ h ≤ 11, wherein R7 and R8 2
are each a CiH2i+1 alkyl group and i is an integer of about 3 ≤ i ≤ 11; 3
(c) an aryl or alkyl phosphite compound represented by the general 4
formula [(III)]: 5
6
wherein R9, R10, R11, R12, R13, and R14 are each a CjH2j+1 alkyl 7
group and j is an integer of about 1 ≤ j ≤ 20, wherein the alkyl groups 8
exhibit tertiary structures, and 9
(d) a compound having at least one alkylthiocarbamoyl group 10
represented by the general formula [(IV)]: 11

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1
wherein R15, R16, R17, and R18 are each CkH2k+1 alkyl groups and 2
k is an integer of about 1 ≤ k ≤ 30, and R15, R16, R17, and R18 3
optionally form a ring structure with the nitrogen atom to which they 4
are bonded; 5
wherein (A) is a chain of sulfur atoms, Sn or S-(CH2)m-S, and 6
n is an integer of about 1 ≤ n ≤ 10, and m is an integer of about 7
1 ≤ n ≤ 6; 8
wherein the total amount of compounds (a) to (d) is about 15% 9
or less by mole, based on the total amount of lubricant. 10
11
Prior art 12
Kamimura 13
Kamimura describes the use of various antioxidants as additives in 14
lubricants. Col. 1:6-10; col. 3:13 et seq. 15
Compound (a). Compounds containing sulfur and a metal, including 16
molybdenum dialkyldithiocarbamate, are described as suitable antioxidants. 17
Col. 5:26-28. These compounds correspond to compound (a) in Claim 1. 18

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Compound (b). Compounds containing phosphorus, sulfur and a metal, 1
including zinc dithiophosphate, are described as suitable antioxidants. Col. 7:7-9. 2
These compounds correspond to compound (b) in Claim 1. 3
Compound (c). Phosphoric acid esters having alkylaryl groups, including 4
(1) triethylphenyl phosphate (triethyl being the alkyl portion of the alkylaryl and 5
phenyl being the aryl portion of the alkyaryl), (2) tripropylphenyl phosphate and 6
(3) tributylphenyl phosphate, are described as suitable antioxidants. Col. 5:50 7
[Formula IX] and col. 6:4-6. These compounds correspond to compound (c) in 8
Claim 1. 9
Compound (d). Alkylthiocarbamoyl compounds having Formula (V): 10
11
where R8 to R11 each represents an alkyl group having 1 to 20 carbon atoms and 12
“e” represents an integer of 1 to 8, are described as useful antioxidants. Col. 4:66 13
to col. 5:10. Preferred compounds include (1) bis(dimethylthiocarbamoyl) 14
disulfide and (2) bis(dibutylthiocarbamoyl) disulfide. These compounds 15
correspond to compound (d) in Claim 1. 16
The antioxidants can be used either singly or in combination. Col. 7:16-17. 17
The amount of antioxidant is preferably in the range of 0.1 to 10% by weight 18
based on the total amount of lubricant. Col. 7:18-20. According to Kamimura, 19

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when the amount is below 0.1%, “the aim of the present invention is not fully 1
exhibited.” Col. 7:20-22. On the other hand when the amount exceeds 10% by 2
weight, the improvement is not observed and solubility is sometimes decreased. 3
Col. 7:22-26. What Kamimura teaches is that one skilled in the art is capable of 4
determining a proper amount of antioxidant. 5
Differences 6
Apart from the amounts of additives claimed, the Examiner found that 7
Kamimura differs in three respects from Claim 1 (Answer, page 5): 8
(1) With respect to compound (c) of Claim 1, Kamimura does not explicitly 9
describe a phosphite where the alkylaryl groups have two alkyl groups; 10
(2) With respect to compound (b) of Claim 1, Kamimura does not explicitly 11
describe a ZDDP [i.e., zinc dialkyldithiophosphate] having tertiary butyl alkyl 12
groups; and 13
(3) While Kamimura describes molybdenum dialkyldithocarbamate, with 14
respect to compound (a) of Claim 1, Kamimura does not explicitly describe the 15
number of carbon atoms in the alkyl group. 16
Cohen 17
The Examiner found that Cohen describes tri-(2,4-ditert-butylphenyl) 18
phosphate. Col. 4:1; Answer, page 6. Cohen thus describes compounds falling 19
within the scope of compound (c) of Claim 1 where R9 and R10 20
are alkyl groups and where “j” is 4 and the “alkyl groups exhibit tertiary 21
structures.” 22
Cohen sought to solve a problem in certain oils. Col. 1:58-61. 23

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Cohen indicates that the stabilizers are used in antioxidant amounts in the 1
lubricating composition. Col. 4:3-4. Generally that amount is said to be from 2
0.1% to 1% of the lubricating oil. What Cohen reveals is that the antioxidant is 3
used in an amount which will perform its function. 4
Katayama 5
The Examiner found that Katayama describes a molybdenum compound 6
having alkylthiocarbamoyl groups. Answer, page 6. These molybdenum 7
compounds correspond to compound (a) in Claim 1. The compounds have the 8
formula: 9
10
wherein R5 and R6 each contain from 1 to 30 carbon atoms and are each an alkyl 11
group, a cycloalkyl group, an aryl group, or an alkylaryl groups, and “m” is a real 12
number meeting the requirement of 0 ≤ m ≤ 4. Col. 2:1-15. 13
The Examiner noted that the 2 ≤ n ≤ 10 [carbon atoms in the alkyl] of 14
United’s Claim 1 overlaps with the 1 to 30 [carbon atoms in the alkyl group] 15
described by Katayama. 16
The Examiner observed that Katayama indicates that its compounds improve 17
fatigue life. Answer, page 6; col. 2:13-16; col. 4 [“for gears”]. Observations about 18
Claim 1 v. Katayama 19

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(1) There may be an error in the formula for compound (a) in Claim 1. At 1
the right side there appears: 2
OmS4─ 3
whereas in the Katayama formula the following appears in the same location: 4
OmS4-m. 5
The Katayama formula makes more sense. The bond (─) in Claim 1 leaves a 6
“dangling valance” and would require 4 sulfur atoms. We will assume, for the 7
purpose of deciding the appeal, that what appears in Claim 1 and elsewhere in the 8
Specification is an obvious error when considered in light of the prior art and that 9
OmS4─ should read OmS4-m. 10
(2) With respect to compound (a) in Claim 1, R3 and R4 are defined as 11
being each independently a CnH2n+1 alkyl group, wherein “n” is an integer of about 12
2 ≤ n ≤ 10. In context, we do not know what significance to attribute to “about”. 13
What this means (apart from the “about”) is that the number of carbon atoms is at 14
least from 2 to 10. On the other hand, in Formulation #4, United describes the use 15
of molybdenum, bis(ditridecylcarbamodithioato) di-u-oxodioxo-di-sulfurized, 16
which is said to have a CAS# of 71342-89-7 and an empirical formula of: 17
C54H108Mo2N2O2S6. 18
Specification, page 13, Formula #4, Compound (a). A “tridecyl” alkyl group 19
would have 13 carbon atoms—a number which considerably exceeds 10 carbon 20
atoms. The 71342-89-7 compound has an overall total of 54 carbon atoms—13 in 21
each of four alkyl groups or a subtotal of 52—and the four alkyl groups would 22
have 108 [{(13 x 2) +1} times 4 = 108] hydrogen atoms. The other two carbon 23

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atoms form part of the thiocarbamoyl groups (of which there are two). Cf. The 1
Katayama compound described at col. 5:45: 2
3
The difference between the Katayama compound and the compound said to have 4
been used in Formulation #4 is that Katayama describes ethyl (alkyl with 2 carbon 5
atoms) groups whereas the compound in Formula #4 has tridecyl (alkyl with 13 6
carbon atoms) groups. On this record, we cannot tell what “about” means. It is 7
therefore difficult to find that a compound with 13 carbon atoms in each alkyl 8
groups falls within the scope of a range of “about 2” to “about 10” carbon atoms. 9
We make the observation because it does not appear that Claim 1 covers the use of 10
Formulation #4. 11
(3) In compound (a) of Claim 1, part of the formula reads “MoOm”. The 12
formula is consistent with that used by Katayama. Col. 2, formula (ii). However, 13
in the context of the Specification and Katayama, we are of the view that one 14
skilled in the art might actually consider MoOm to be (MoO)m with the “m” 15
applying to both the Mo and O. If it were otherwise, we do not see how United or 16
Katayama could have a compound with two molybdenum atoms. 17
Igarashi 18
Igarashi describes the use of a zinc compound having alkyl groups with 1-18 19
carbon atoms, including butyl alkyl groups with 4 carbon atoms. Col. 2, formula 20

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(I) to col. 3:1-2. The compounds are said to reduce friction in lubricants. 1
Col. 1:37-47. 2
Observation about Claim 1 v. Igarashi 3
In compound (b) of Claim 1, two of the sulfur atoms have three (3) bonds. 4
See the circled S atoms below. On the other hand, the corresponding sulfur atoms 5
of Igarashi have just two (2) bonds. Col. 2, formula (I). Neither United nor the 6
Examiner have noted the difference and perhaps have assumed that the difference, 7
if it exists, is not significant. It may be that the bonds attached to the Zn and the 8
circled S atoms in compound (b) of Claim 1 is a “typo” and that the two bonds 9
should be removed. 10
11
Discussion 12
United has not shown that the Examiner failed to make out a prima facie 13
case of obviousness under a preponderance of the evidence standard. “The 14
combination of familiar elements according to known methods is likely to be 15
obvious when it does no more than yield a predictable result.” KSR Int’l Co. v. 16
Teleflex, Inc., 550 U.S. 398, 416 (2007). The record shows that United has used 17
known commercial products for their intended prior art purpose to achieve a 18

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predictable result. In our view nothing more is needed to make out a prima facie 1
case of obviousness. 2
United’s use of a mixture of additives is consistent with, and foretold 3
by, Kamimura, which explicitly teaches use of a mixture of antioxidants. 4
Col. 7:16-17. 5
United argues (Brief, page 5) that some additives may impede other types of 6
additives relying on Camenzind, U.S. Patent 5,320,764, col. 1:29-32, which states: 7
However, in many cases, the various types of additives impede one 8
another in their action; thus, for example, many corrosion inhibitors 9
reduce the action of high pressure additives. 10
Camenzind, however, goes on to say that (col. 1:33-34): 11
This antagonism can be overcome by using a multi-functional 12
additive. 13
Kamimura describes the use of a multi-functional additive and explicitly teaches 14
that its additives may be used in combination. 15
We credit the specific Kamimura teachings over the general teachings of 16
Camenzind. Accordingly, United’s argument is not entitled to controlling weight. 17
United argues that the Examiner erroneously handled the range amounts of 18
additives vis-à-vis the lubricant. Kamimura describes ranges in terms of weight 19
percent whereas Claim 1 calls for ranges in terms of mole percent. United further 20
argues the Examiner’s determination “that one of ordinary skill in the art could 21
discover the claimed amounts as a matter of routine experimentation is also 22
unsupported.” Reply, page 3. What becomes apparent from Kamimura is that a 23
person having ordinary skill in the art would be more than capable of determining 24

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an appropriate amount of additive vis-à-vis lubricant, whether in mole % or weight 1
% (or for that matter volume %). See, e.g., col. 7:18-25. Igarashi likewise makes 2
clear that one skilled in the art is capable of determining amounts. See, e.g., 3
col. 3:65 to col. 4:4. Cohen talks in terms of “effective antioxidant qualities” 4
(Abstract) and “used in antioxidant amounts” (col. 4:3-4). Katayama states that 5
“[t]he amount of each of Compounds (b) and (c) being added is not critical and can 6
be determined appropriately.” Col. 9:15-17. In this art, one skilled in the art can 7
readily determine amounts of additives and would select amounts of additives 8
which would yield desirable (as opposed to unacceptable) results. Accordingly, we 9
agree with the Examiner that on this record the mole % of additives is a result-10
effective variable well within the skill of the art. 11
United states that the claims are “directed to a method of improving the 12
performance characteristics of a lubricant ....” Brief, page 4. Specifically 13
mentioned is an “additive composition to enhance friction reducing capability, 14
impart good elevated temperature and good oxidation resistance, and resist sludge 15
formation, and improve fatigue life.” Brief, page 5. An inventor must show that 16
the results the inventor says the inventor gets with the invention are actually 17
obtained with the invention. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). 18
United has not shown that it achieves the results claimed in the Brief. 19
Formulation #4, for which some “results” data is presented in the Specification, 20
does not fall within the scope of Claim 1 because the MolyVan 822 used in 21
Formulation #4 has alkyl groups with 13 carbon atoms whereas Claim 1 is limited 22
to the use of a molybdenum compound having alkyl groups with about 2 to 10 23
carbon atoms. The Examiner found that “[e]vidence of unexpected properties may 24

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be in the form of a direct or indirect comparing of the claimed invention with the 1
closest prior art which is commensurate in scope with the claims.” Answer, 2
page 13. We would agree with the Examiner that any showing in the Specification 3
in this case is not commensurate in scope with the breath of the claims even if 4
MolyVan 822 falls within the scope of compound (a) of Claim 1. 5
We have considered United’s remaining arguments and find none that 6
warrants reversal of the Examiner’s rejection. Cf. Hartman v. Nicholson, 483 F.3d 7
1311, 1315 (Fed. Cir. 2007). 8
New rejections, including rejections of “allowed” Claims 25-28 9
New rejection 1. Claims 1-21 and 25 are rejected under 35 U.S.C. § 112, 10
second paragraph, as being indefinite due to the use of “about” in defining R3 and 11
R4 as a CnH2n+1 alkyl group, wherein “n” is an integer of about 2 ≤ n ≤ 10. In the 12
context of this case, we cannot tell what United intends with the word “about”. 13
Generally, “about” means “approximately”. To the extent “about” is intended by 14
United to reach a carbon atom with 13 carbons, we would note that 13 is not 15
approximately 10 in a range of about 2 to about 10. 16
Claims 25-28 are also in the application and are reproduced in the Claims 17
Appendix of the Appeal Brief (page 17). 18
New rejection 2. Claim 26 is rejected as being unpatentable under 35 U.S.C. 19
§ 112, fourth paragraph. Claim 1, from which Claim 26 depends, calls for the 20
secondary compound zinc O, O-dibutylphosphorodithioate. The language 21
“dibutyl” in Claim 26 normally means a straight chain alkyl group which is not an 22
alkyl group having secondary alkyl group. 23

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New rejection 3. Claim 25 is unpatentable under 35 U.S.C. § 112, first and 1
second paragraphs. Claim 25 calls for a composition according to Claim 1 which 2
has a load-carrying capacity factor of 3.94 with regard to a standard MIL-PRF-3
23699 oil. The precise nature of a “standard” MIL-PRF-23699 oil is not clear 4
(§ 112, second paragraph). We do not know what United means by “standard.” 5
Furthermore, the only composition described (§ 112, first paragraph—written 6
description) in the Specification which arguably achieves a load-carrying capacity 7
factor of 3.94 is one where compound (a) is a molybdenum compound having alkyl 8
groups with 13 carbon atoms—a molybdenum compound not falling within the 9
scope of Claim 1 which calls for molybdenum compounds having alkyl groups of 10
about 2 to about 10 carbon atoms. It is not apparent how one skilled in the art, 11
following the teachings of the Specification would be enabled (§ 112, first 12
paragraph—enablement requirement) to make an additive commensurate with the 13
breadth of Claim 1 having the claimed load-carrying capacity factor of 3.94 (apart 14
from Formulation #4). Likewise, the Specification does not describe (§ 112, first 15
paragraph—written description) an embodiment having a load-carrying capacity 16
factor of 3.94 within the scope of Claim 1. 17
New rejection 4. Claims 26-28 are unpatentable under 35 U.S.C. § 112, 18
fourth paragraph because they do not further limit Claim 1. Claim 1 calls for the 19
use of a molybdenum compound having alkyl groups of about 2 to about 10 20
carbon atoms. Molybdenum bis(ditridecylcarbamdithioatao) di-uoxodioxo-di 21
sulfurized called for in Claim 26 is not within the scope of claim 1 and therefore 22
does not further narrow Claim 1. 23

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New Rejection 5. Claims 26-28 are unpatentable under 35 U.S.C. § 103(a). 1
Each of the four compounds (a) through (d) mentioned in Claim 26 are 2
known commercial compounds. See Formulation #4 (Specification, page 13, 3
additive table following line 5. All are being used for known prior art purposes. 4
The four references demonstrate that each would be expected to perform a 5
useful additive function in a lubricant. 6
Compound (a)—the molybdenum compound 7
The molybdenum compound has an alkyl group with 13 carbon atoms 8
(tridecyl). Katayama describes corresponding R groups which have 1 to 30 carbon 9
atoms and exemplifies alkyl groups having 2, 3, 5, 8 12, and 28 alkyl groups 10
(formulas in cols. 5-6). Katayama would suggest to one having ordinary skill in 11
the art that a known molybdenum compound having alkyl groups with 13 carbon 12
atoms would be useful for Kayayama’s purpose. Molybdenum compounds having 13
13 carbon atoms are known commercial products. The molybdenum compounds 14
are said to improve fatigue life in lubricants. Col. 4:36-38. It would have been 15
obvious to use the known commercial molybdenum compound in a lubricant to 16
perform a function for which the molybdenum compounds are known. 17
Compound (b)—the secondary zinc dithiolphosphate compound 18
Kamimura describes the use of “zinc dialkyldithocarbamate (Zn-DTC)”. 19
Col. 5:26-27. Claim 26 calls for zinc O,O-dibutylphosphorodithioate. The only 20
difference is that the “dialkyl” of Kamimura is generic to the “dibutyl” of 21
Claim 26. Igarashi, however, describes zinc ditholphosphate compounds wherein 22
the alkyl group has 1 to 18 carbon atoms, and explicitly mentions n-butyl, isobutyl, 23
sec-butyl and tert-butyl. Col. 2, formula (ii) through col. 3:2. Igarashi indicates 24

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that its compound is useful in reducing friction in lubricants. Col. 1:37-47. It is 1
also noted that Igarashi describes the use of the zinc compound in combination 2
with a molybdenum compound. Col. 4:5-21. United has used a known 3
commercial product for a purpose consistent with utility described in the prior art. 4

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Compound (c)—the tertiary phenyl phosphate 1
Claim 26 calls for the use of tris-(2,4-di-tertiary-butyl-phenyl) phosphite. 2
Kamimura describes the use of tris phosphites. Col. 5, formula (X). The alkyl 3
groups on the tris phosphite can be alkylaryl having 4 to 30 carbon atoms. Di-tri-4
butyl alkyl groups are not explicitly described by Kamimura. However, Cohen 5
describes the use of tris-(2,4-di-tert-butylphenyl)-phosphite. Col. 4:1. The 6
phosphite is said to be a known stabilizer for lubricants. Col. 1:27-28. United has 7
used a known commercial product for a purpose for which the product is known in 8
the art. 9
Compound (d)—the alkylthiocarbamoyl compound 10
Claim 26 calls for the use of tetra-n-butylthiuram. Tetra-n-butylthiuram is a 11
known commercial product. See Formulation #4 (Specification, page 13, table 12
following line 5). Tetra-n-butylthiuram falls within the scope of the thiuram 13
compounds described by Kamimura. Col. 5, formula (v), where the R’s are alkyl 14
groups having 1-20 carbon atoms (n-butyl has 4 carbon atoms) and “e” is -1-8 (in 15
United’s thiuram “e” is 2). With respect to Claim 26, the Examiner accurately 16
found (Answer, page 4) that the alkyl limitation of Claim 26 falls within the scope 17
of Kamimura. United has used a known commercial product for a purpose known 18
in the prior art. 19
Load-carrying capacity 20
Claim 28 calls for “a load-carrying capacity factor of 3.94 with regard to a 21
standard MIL-PRF 23699 oil.” United alleges that the 3.94 load-carrying capacity 22
is unexpected. On this record, United’s allegation is not supported by the 23
evidence. United would have us rely on experimental data resulting from testing 24

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of Formulation #4 and the drawing (reproduced above). However, we decline on 1
this record to give that testing much weight. 2
United says that Exxon-Mobil Jet Oil II is a standard version of MIL-PRF-3
23699. Specification, page 13:10-11. However, United does not tell us what 4
additives, if any, are contained in the Exxon-Mobil product. Nor is it clear to us 5
what United means by “standard”. Likewise, United does not reveal what 6
additives, if any, Hartco HXL-7994 may have contained before Formulation #4 7
was added. If it contained no additives, then it is not clear why a load-carrying 8
increase (including a 3.94 load-carrying capacity) would be unexpected. Addition 9
of additives, as suggested by the four references, would be expected to improve 10
properties. 11
It appears (apart from the § 112 issues) that United is using known 12
compounds having known uses (antioxidants) to achieve a result not shown to be 13
unexpected. United therefore is using known materials in a manner taught by the 14
prior art. Determination of the amounts of each to be used is well within the skill 15
of the art as has been previously discussed. Under the circumstances, on the 16
record before us, the subject matter of claims 26-28 is unpatentable under 17
35 U.S.C. § 103(a). 18
Decision 19
Upon consideration of the appeal, and for the reasons given herein, it is 20
ORDERED that the decision on the Examiner rejecting claims 1-21 is 21
affirmed. 22
FURTHER ORDERED that since we have rejected allowed 23
claims 25-28, we have entered a new rejection pursuant to 37 C.F.R. § 41.50(b). 24

Appeal 2011-005402
Application 11/887,684

23

FURTHER ORDERED, that since we brought up new points, 1
including (1) the number of alkyl groups in compound (a) and the meaning of 2
“about”; (2) a dangling valence in compound (a) in Claim 1; (3) the weight to be 3
given to Camenzind; and (4) other possible formula errors, our affirmance of the 4
Examiner’s rejection of Claims 1-21 is designated as a new rejection. 37 C.F.R. § 5
41.50(b). 6
FURTHER ORDERED that our decision is not a final agency action. 7
FURTHER ORDERED that within two (2) months from the date of 8
our decision, appellant may further prosecute the application on appeal by 9
exercising on of the two following options: 10
Option 1: Request that prosecution be reopened by submitting 11
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1). 12
Option 2: Request rehearing on the record presently before the 13
Board. 37 C.F.R. § 41.50(b)(2). 14
FURTHER ORDERED that no time period for taking any subsequent 15
action in connection with this appeal may be extended under 37 C.F.R. 16
§ 1.136(a)(1)(iv). 17
AFFIRMED 18
New rejections under 37 C.F.R. § 41.50(b) 19
20
21
22
23
24
25
bim 26