Ex Parte Wheatley

Patent Trial and Appeal Board

Feb 8, 2017

12812820 (P.T.A.B. Feb. 8, 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.
12/812,820 10/07/2010 Alan Richard Wheatley TS7717 USAP 1388
23632 7590 02/10/2017
SHF! T OH miUPANY EXAMINER
P O BOX 2463 GOLOBOY, JAMES C
HOUSTON, TX 77252-2463
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN RICHARD WHEATLEY
Appeal 2016-002465
Application 12/812,820
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a non-final rejection
dated December 19, 2014 of claims 1, 3—8, and 12—22. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2016-002465
Application 12/812,820
Appellant’s invention is directed to a method for preparing a
lubricating composition. App. Br. 2. Claim 1 is illustrative of the subject
matter on appeal and is reproduced below:
1. A method for preparing a lubricating composition
comprising the steps of:
a) providing a base oil composition comprising a mineral
oil;
b) providing a solution of an alkyl-substituted quinoline
or oligomeric derivative thereof in a solvent comprising a
polyglycol; and
c) adding the solution of step b) to the base oil
composition of step a) at a temperature in the range of from 10
to 110°C.
The Examiner maintained the following rejections from the
Examiner’s Final Action:1
I. Claims 1, 3—8, and 12—17 rejected under 35 U.S.C. § 103(a) as
unpatentable over Roach (US 2,908,646, issued October 13, 1959), Iso (US
2005/0261141 Al, published November 24, 2005), and Chemical Book
(Chemical Book, Poly(l,2-dihydro-2,2,4-trimethylquinoline), retrieved from
the internet at
on February 14, 2013).
1 Both Appellant and the Examiner rely on the statement of rejection as
presented by the Examiner in the Non-Final Action of May 30, 2014. Ans.
2; see Appeal Brief, generally. Accordingly, we also refer to the Non-Final
Action for any reference to the Examiner’s factual findings.
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Application 12/812,820
II. Claims 18—22 rejected under 35 U.S.C. § 103(a) as
unpatentable over Roach, Iso, Chemical Book, and Ward (US 6,916,768 B2,
issued July 12, 2005).2
OPINION
The Prior Art Rejections
Rejection I
In addressing Rejection I, Appellant does not argue any claim separate
from the other. See Appeal Brief, generally. Accordingly, we select claim 1
as representative of the subject matter before us for review on appeal.
Claims 3—8, and 12—17 stand or fall with representative claim 1.
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejection of representative
claim 1 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner.
We refer to the Examiner’s Non-Final Action for a statement of the
rejection. Non-Final Act. 3—5.
Appellant argues Roach’s 2,2,4-trimethyl-1,2-dihydroquinoline
(TMQ) (alkyl-substituted quinoline) does not have a well-defined melting
point. App. Br. 4; Roach col. 3,11. 14—16. Appellant further argues Roach’s
Example adds TMQ to the lubricant at temperatures higher and outside the
claimed temperature range (about 115°C). App. Br. 4; Roach col. 3,11. 14—
2 In the Non-Final and Final Actions, this Examiner’s statement of rejection
only addressed claims 18—20 instead of claims 18—22. Non-Final Act. 5—6;
Final Act. 2. The Examiner entered a new ground of rejection addressing
claims 18—22 in the Answer to correct this deficiency. Ans. 5—6. Appellant
filed a Reply Brief within the prescribed time period indicating that
Appellant essentially relies on the arguments presented in the Appeal Brief
as sufficient to address the new ground of rejection. App. Br. 6; Reply Br. 4.
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Application 12/812,820
16. Thus, Appellant argues there is no reasonable expectation of success for
adding an alkyl-substituted quinoline or oligomeric derivative, such as
TMQ, to a base oil at a temperature in the range of from 10 to 110°C as
claimed. App. Br. 4.
We are unpersuaded by these arguments. It is well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed.
Cir. 1992). The Examiner found Roach discloses a method of preparing a
grease for ball and roller bearings by adding a polymerized dihydroquinoline
derivative in the form of a solution in a part of a base oil. Non-Final Act. 3;
Roach col. 2,11. 18—36, 44—62. The Examiner found Roach discloses the
polymerized dihydroquinoline is added to the grease when the grease is
maintained at a temperature above the melting point of the polymer. Non-
Final Act. 4; Roach col. 2,11. 44—62. The Examiner relied upon Chemical
Book to teach the melting point of TMQ as ranging from 72 to 94°C. Non-
Final Act. 4; Ans. 6; Chemical Book 1. Based on the disclosure of Chemical
Book, the Examiner found Roach teaches adding the polymer solution at a
temperature range higher than 94°C, which overlaps the claimed temperature
range of 10 to 110°C. Non-Final Act. 4. Thus, the Examiner provided a
reasonable basis for one skilled in the art to infer from Roach’s disclosure
that the polymer solution is added to the base oil at a temperature range that
overlaps the claimed temperature range.
While Appellant argues Roach’s Example teaches adding the polymer
to the base oil at a temperature of 115°C (App. Br. 4; Roach col. 3,11. 14—
16), it is well settled that a reference may be relied upon for all that it would
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Appeal 2016-002465
Application 12/812,820
have reasonably suggested to one having ordinary skill in the art, including
non-preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art, including
unpreferred embodiments, must be considered”) (quoting In re Lamberti,
545 F.2d 747, 750 (CCPA 1976)). Appellant does not direct us to any
portion of Roach that supports Appellant’s assertion that the temperature in
Roach’s Example limits Roach’s broader disclosure of adding the polymer
to the base oil at a temperature that is above the melting temperature of the
polymer (i.e., 72 to 94°C). Thus, Appellant has not distinguished the
claimed temperature range from the teachings of Roach.
Appellant argues there is no guidance for the skilled person to select a
mixture of a polyglycol and a mineral oil as the base oil from Iso to be used
in the grease compositions of Roach. App. Br. 5. According to Appellant,
the Examiner benefitted from impermissible hindsight in combining the
cited art because the advantages of the presently claimed subject-matter are
simply not apparent from the teachings of Roach and Iso. Id.
We also find these arguments unavailing. Roach and Iso are both
directed to lubricants for roller bearings. Roach col. 2,1. 16; Iso 19. Both
Roach and Iso disclose the use of mineral oils as a base oil components.
Roach col. 2,1. 23; Iso 1179. The Examiner found Iso discloses greases for
rolling bearings where the grease can incorporate a mixture of polyglycol
and a mineral oil as a base oil. Non-Final Act. 4; Iso 2, 179, and 180.
Thus, given that the cited art is directed to lubricants for roller bearings, the
Examiner provided a reasonable basis why one skilled in the art would have
modified the lubricant of Roach by using the polyglycol/mineral oil mixture
of Iso as a useful base oil for the roller bearing lubricants of Roach and
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Application 12/812,820
arrive to the claimed invention. Non-Final Act. 5. That is, the Examiner
determined that one of ordinary skill in the art would have had a reasonable
expectation that Iso’s polyglycol/mineral oil mixture would have been
suitable as a base oil for the lubricant of Roach. Appellant does not
adequately explain why one skilled in the art would not have been capable of
adapting Iso’s polyglycol/mineral oil as a base oil component for use in the
Roach’s lubricant composition.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
3—8, and 12—17 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
Rejection II
The Examiner presented a separate new ground of rejection of claims
18—22 under 35 U.S.C. § 103(a) as unpatentable over Roach, Iso, Chemical
Book, and Ward (Rejection II). Non-Final Act. 5—6; Ans. 5—6. In
addressing this rejection, Appellant relies on the arguments presented when
discussing representative claim 1 and does not address or further distinguish
the additionally cited secondary reference based on the additional limitations
of the respectively rejected claims. App. Br. 6; Reply Br. 4.
Accordingly, we affirm the rejection of claims 18—22 for the reasons
presented by the Examiner and given above.
ORDER
The Examiner’s prior art rejections of claims 1, 3—8, and 12—22 are
affirmed.
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Appeal 2016-002465
Application 12/812,820
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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