Ex Parte Wu et al

Patent Trial and Appeal Board

Sep 26, 2012

11172161 (P.T.A.B. Sep. 26, 2012)

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.
11/172,161 06/29/2005 Margaret May-Som Wu 2005B085 7638
23455 7590 09/26/2012
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
09/26/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte MARGARET MAY-SOM WU,
ANDREW JACKSON, WALTER DAVID VANN,
JAMES THOMAS CAREY, NORMAN YANG,
and SUZZY CHEN HIS HO
____________

Appeal 2011-010796
Application 11/172,161
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection
of claims 2, 4, 6 - 11, and 18 - 22. We have jurisdiction under 35 U.S.C. § 6.

Appeal 2011-010796
Application 11/172,161

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STATEMENT OF THE CASE
Claim 8 is representative of the subject matter on appeal and is set
forth below:
8. A formulated industrial oil, said oil having an ISO viscosity grade
of 2 to 46,000 and comprising:

(a) 1 to 95 wt % of at least one HVI-PAO;

(b) 5 to 50 wt % of at least one first basestock selected from Group I
basestocks having a viscosity range of from 3 cSt to 50 cSt, Group II and
Group III hydroprocessed basestocks, and a Group IV PAO having a VI of
about 130 or less; and

(c) 1 to 50 wt % of a second basestock selected from Group V basestocks.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wu 4,912,272 Mar. 27, 1990
Willey et al. (Willey) 7,312,185 B2 Dec. 25, 2007

THE REJECTIONS

1. Claims 2, 4, 6-11, and 18-22 are rejected under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious over
Willey.

2. Claims 2, 4, 6-11, and 18-22 stand rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious
over Wu.

Appeal 2011-010796
Application 11/172,161

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Rejection 1
Issue: Did the Examiner err in determining that Willey anticipates and/or
makes obvious Appellants’ claimed subject matter, in particular, with regard
to a “formulated industrial oil, said oil having an ISO viscosity grade of 2 to
46,000” as recited in claim 8?
We answer this question in the affirmative and REVERSE.
Appellants argue:
Independent claim 8 recites formulated industrial oil. Willey is
clearly and unequivocally directed to a solid grease composition
- the rejections of the claims over Willey consistently refer to the
taught composition of Willey as a grease - never oil.
Br. 10.
A critical flaw in the Examiner’s position is that the Examiner
does not make findings that Willey’s grease composition has the
required components (a), (b), and (c), in the claimed amounts, while
having an ISO viscosity as low as 46,000, which gives credence to
Appellants’ above-mentioned position. While the Examiner states that
Test Grease 6 and Test Grease 7 of Willey each meets the claimed
viscosity grade value of 2 to 46,000 (Ans., para, bridging pp. 7-8),
these greases do not include the required component (c) selected from
Group V base stocks, in addition to required components (a) and (b) in
the claimed amounts. It appears that the Examiner believes that the
alkylated naphthalene (discussed on col. 11, ll. 53-64 of Willey) is a
Group V oil and that this satisfies component (c). Ans. 4. But, as
Appeal 2011-010796
Application 11/172,161

4
explained by Appellants in the paragraph bridging pages 9-10 of the
Brief, in columns 11-12 of Willey, Willey teaches alternatives to the
low viscosity AN, not additions to the HVI-PAO and AN blends.
Notably, the Examiner does not address this point made by Appellants
in her response to argument section of the Answer. We note that “[t]o
anticipate a claim, a prior art reference must disclose every limitation
of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Similarly, when
determining whether a claim is obvious, an examiner must make “a
searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995) (emphasis added). Because the Examiner
has not shown that Willey teaches each component in the claimed
amounts, while having an ISO viscosity of 2 to 46,000, as explained by
Appellants, we are convinced of error regarding the anticipation
rejection. With regard to the obviousness rejection, it is notable that
the Examiner does not provide an apparent reason as to why one
skilled in the art would have modified Willey to arrive at the claimed
invention. We reiterate that the Examiner’s reliance of Test Grade 6
and Test Grease 7 lacks the required component (c) in the claimed
amount, in combination with component (a) and (b) in the claimed
amounts, while having an ISO viscosity of 2 to 46,000, and the
Examiner does not provide an apparent reason to modify Willey to
arrive at the claimed invention in this regard.
In view of the above, we reverse Rejection 1.

Appeal 2011-010796
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Rejection 2
Issue: Did the Examiner err in determining that Wu anticipates and/or
makes obvious Appellants’ claimed subject matter, in particular, the claimed
amount of component (c) as recited in claim 8?
Appellants argue:
Wu completely fails to disclose to those skilled in the art as to
how much of any third basestock should be present in the
lubricant blend.
Br. 14.
Appellants also argue:
Appellants respectfully assert that no suggestion or motivation
has been provided to select three basestocks of the specific types
and quantities as set forth in the specific combination of claim 8,
and Wu fails to teach or suggest all the claim limitations.
Br. 15.
We agree with Appellants’ position. The Examiner does not point to
any teaching in Wu that teaches or suggests the claimed amount of Group V
basestocks. The Examiner finds that the Examples in Wu teach component
(a) and component (b). Ans. 8. The Examiner takes the position that Group
V basestocks include “polyethers, polyesters, polyacetals, and others”. Ans.
9. It thus appears that the Examiner believes that the polyethers, polyesters,
and polyacetyls disclosed in col. 2, ll. 21-30 of Wu meet the claimed
component (c). Ans. 8-9. However, the Examiner has not pointed to
teachings as to how much of any third basestock should be present in the
lubricant blend, when combined with components (a) and (b), while having
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an ISO viscosity of 2 to 46,000. Also, the Examiner does not provide an
apparent reason to modify Wu to arrive at the clamed invention in this regard.
We therefore are in agreement with Appellants' position as stated in the Brief
on pages 14-15.
In view of the above, we reverse Rejection 2.
CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.

REVERSED

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