Ex Parte Zehler

Board of Patent Appeals and Interferences

Jun 25, 2002

08658341 (B.P.A.I. Jun. 25, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 47
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EUGENE R. ZEHLER
__________
Appeal No. 2001-1249
Application 08/658,341
___________
ON BRIEF
___________
Before KIMLIN, OWENS and TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the refusal to allow claims 8, 16, 24-
29, 31-34 and 40-44 as amended after final rejection. These are
all of the claims remaining in the application.
THE INVENTION
The appellant’s claimed invention is directed toward a
grease formulation which includes a base stock and a thickener.
Claim 27 is illustrative:
Appeal No. 2001-1249
Application 08/658,341
2
27. A grease formulation comprising a mixture of (1) an
environmentally friendly inorganic thickener or a gelling agent
additive thickener, and (2) a base stock, said base stock
consisting essentially of a neopentyl polyol ester consisting
essentially of the reaction product of a neopentyl polyol and a
C12-C20 monocarboxylic acid, said base stock having the following
characteristics:
(i) flash point of 175°C;
(ii) kinematic viscosity of less than 15 cSt at 100°C;

and a biodegradability of
70%, as determined by
CEC-L-33-T-82.
THE REFERENCES
Mores et al. (Mores) 4,066,789 Jan. 3, 1978
Tubbs et al. (Tubbs) 4,557,839 Dec. 10, 1985
Zehler et al. (Zehler ‘990) 4,589,990 May 20, 1986
Zehler et al. (Zehler ‘840) 4,601,840 Jul. 22, 1986
Mullin 4,780,229 Oct. 25, 1988
King 4,965,001 Oct. 23, 1990
Schmid et al. (Schmid) 5,057,247 Oct. 15, 1991

THE REJECTION
Claims 8, 16, 24-29, 31-34 and 40-44 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combined teachings
of Schmid, Mullin, Zehler ‘990, King, Tubbs, Zehler ‘840 and
Mores.
OPINION
We affirm the aforementioned rejection.
The appellant states (brief, page 4): “Claims 27, 8, 16, 28,
29 and 31 may be considered to stand or fall together, but not
Appeal No. 2001-1249
Application 08/658,341
3
claims 25 and 32-34. Further, claims 24, 40, 41, 43 and 44 may
be considered to stand or fall together, but not claim 26.” We
address the claims separately to the extent justified by the
appellant’s arguments. See In re Burckel, 592 F.2d 1175, 1178-
79, 201 USPQ 67, 70 (CCPA 1979); In re Herbert, 461 F.2d 1390,
1391, 174 USPQ 259, 260 (CCPA 1972); 37 CFR § 1.192(c)(7)(1997).
King discloses a lubrication blend which consists
essentially of at least one complex sulfide of antimony having a
specified formula, at least one antimony oxide, and at least one
lamellar crystalline solid lubricant (col. 1, lines 39-49). The
lubrication blend can be combined with any suitable lubricant
base, the exemplified lubricant bases including greases and
synthetic fluids (col. 3, lines 31-38). The synthetic fluids
can, and often do, include a thickener (col. 3, lines 56-57).
Because the thickeners disclosed by King (col. 3, lines 57-61)
are the same as those disclosed by Tubbs (col. 2, lines 6-9) for
forming a grease, it reasonably appears that King’s mixture of
synthetic lubricant and thickener is a grease. King’s thickeners
include soaps, which are among the appellant’s gelling agent
additive thickeners (specification, page 4, lines 19-23), and
silica and clay, which are among the appellant’s inorganic
thickeners (specification, page 12, lines 21-23). King’s silica
Appeal No. 2001-1249
Application 08/658,341
1 The appellant indicates that as used by the appellant, “environmentally friendly” refers
to thickeners which are naturally occurring (specification, page 12, lines 23-26).
4
and clay are “environmentally friendly” as that term is used by
the appellant.1
King discloses a wide range of exemplified synthetic
lubricants (col. 3, lines 48-56), one of which
(trimethylolpropane tripelargonate) is among the second neopentyl
polyol esters encompassed by the appellant’s claim 40. King does
not disclose that the synthetic lubricant can be the reaction
product of a neopentyl polyol and a C12-C20 monocarboxylic acid as
recited in both of the appellant’s independent claims 27 and 40.
However, King indicates that any synthetic fluid having
lubricating viscosity is suitable as the lubricating base
(col. 3, lines 48-49). Two such synthetic fluids which are among
the neopentyl polyol esters encompassed by the appellant’s
claim 27 and the first neopentyl polyol esters encompassed by the
appellant’s claim 40 are, as indicated by Zehler ‘990 (col. 14,
lines 22-23 and 52) and Zehler ‘840 (col. 14, lines 48-49;
col. 15, lines 9-10), trimethylolpropane triisostearate and
trimethylolpropane trioleate. Mullin also indicates that
trimethylolpropane triisostearate has a lubricating viscosity,
and discloses its use in combination with trimethylolpropane
Appeal No. 2001-1249
Application 08/658,341
2 Because trimethylolpropane triisostearate is disclosed by
the Zehler references and Mullin, the appellant’s argument that
this compound is not disclosed by Schmid (brief, page 4) is not
convincing.
3 Hence, the appellant’s argument that the references do not
address biodegradability (brief, pages 4-5) is not persuasive.
5
tripelargonate, which is among the second neopentyl polyol esters
encompassed by the appellant’s claim 40 (col. 8, lines 36-37).2
Consequently, the use of trimethylolpropane triisostearate,
trimethylolpropane trioleate, or a mixture of trimethylolpropane
triisostearate and trimethylolpropane tripelargonate as King’s
lubricant base would have been fairly suggested to one of
ordinary skill in the art by the applied prior art. Because
these synthetic lubricants are among those recited in the
appellant’s claims 27 and 40, they necessarily have the flash
point, kinematic viscosity and biodegradability recited in those
claims. See In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51
(CCPA 1963)(“From the standpoint of patent law, a compound and
all of its properties are inseparable; they are one and the same
thing.”)3
The appellant argues that each of the applied references
lacks some element of the invention recited in claims 27 and 40
(brief, pages 4-6). This argument is not well taken because the
Appeal No. 2001-1249
Application 08/658,341
6
appellant is attacking the references individually when the
rejection is based on a combination of references. See In re
Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981); In re
Young, 403 F.2d 754, 757-58, 159 USPQ 725, 728 (CCPA 1968). As
discussed above, the combined teachings of the references would
have fairly suggested, to one of ordinary skill in the art, each
of the elements recited in these claims.
We therefore conclude that the appellant’s claimed invention
would have been obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103. Accordingly, we affirm
the examiner’s rejection.
DECISION
The rejection of claims 8, 16, 24-29, 31-34 and 40-44 under
35 U.S.C. § 103 over the combined teachings of Schmid, Mullin,
Zehler ‘990, King, Tubbs, Zehler ‘840 and Mores is affirmed.
Appeal No. 2001-1249
Application 08/658,341
7
No time period for taking any subsequent action in connec-
tion with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 2001-1249
Application 08/658,341
8
COGNIS CORPORATION
2500 RENAISSANCE BLVD., SUITE 200
GULPH MILLS, PA 19406
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