Ex parte Zinke et al.

Board of Patent Appeals and Interferences

Dec 14, 2000

08451378 (B.P.A.I. Dec. 14, 2000)

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for publication and is not binding precedent of the Board.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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HORST ZINKE and ROLF SCHUMACHER
____________
Appeal No. 1997-1875
Application No. 08/451,378
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1 through 13 which are all of the claims in the
application.
The subject matter on appeal relates to a compound (as
well as a composition containing the compound and a method
which includes adding the compound to a fluid) of a certain
formula which defines a specified class of bisdithiophosphoric
Appeal No. 1997-1875
Application No. 08/451,378
The appealed claims will stand or fall together; see page1
4 of the brief. Accordingly, in our disposition of this
appeal, we will focus upon representative independent claim 1
with which the other appealed claims will stand or fall.
2
acid derivatives. These compounds are said to enhance the
properties of fluids such as enhancing the wear and friction
characteristics of lubricants. The appealed subject matter is
adequately illustrated by independent claim 1, a copy of which
taken from the appellants' brief is appended to this decision.
The references relied upon by the examiner in the
rejections before us are:
Miles 3,784,588 Jan. 8,
1974
Umemoto et al. (Umemoto) EPA-465,156 A2 Jan.
8, 1992
Miles GB-1,287,331 Aug. 31, 1972
All of the claims on appeal stand rejected under 35
U.S.C.
§ 102(a) or (b) as being anticipated by or in the alternative
under 35 U.S.C. § 103 as being obvious over the British
reference to Miles, the U.S. patent to Miles or the European
reference to Umemoto.1
For the reasons set forth below, we will sustain the
examiner's § 103 rejection but not the § 102 rejection.
Appeal No. 1997-1875
Application No. 08/451,378
3
In order for a § 102 rejection to be proper, the
reference must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining various
disclosures not directly related to each other by the
teachings of the cited reference. In re Arkley, 455 F.2d 586,
587, 172 USPQ 524, 526 (1972). Compare In re Petering, 301
F.2d 676, 681, 133 USPQ 275, 279 (1962). In the case at bar,
the only way to derive the here claimed compounds from any of
the applied references is via the prohibited exercise of
picking, choosing and combining disclosures within the
respective references. That is, the appellants' claimed
compounds would be obtained from the applied reference
teachings only by selecting certain choices for numerous
variables within the generic compound formula disclosed in
these references.
Under the foregoing circumstances, we cannot regard the
applied references as anticipatory of the appealed claims. It
follows that the examiner's § 102 rejection of claims 1
through 13 as being anticipated by the British reference to
Appeal No. 1997-1875
Application No. 08/451,378
4
Miles or the U.S. patent to Miles or the European reference to
Umemoto cannot be sustained.
We reach a different conclusion, however, with respect to
the examiner's § 103 rejections. Contrary to the appellants'
apparent belief, one having an ordinary level of skill in the
art would have been motivated to select the particular
variables necessary to yield the here claimed compounds
because of the generic teachings of the respective references
which disclose that all of the compounds embraced thereby are
useful as fluid additives (as are the here claimed compounds).
The mere fact that these respective references may embrace a
large number of compounds does not militate against an
obviousness conclusion with respect to each of them. In re
Merck, 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.
1989).
For these reasons, it is our determination that the
reference evidence adduced by the examiner establishes a prima
facie case of obviousness within the meaning of 35 U.S.C. §
103. Because the appellants have submitted rebuttal evidence
of nonobviousness, we now proceed to retrace our
Appeal No. 1997-1875
Application No. 08/451,378
5
considerations on the issue of obviousness. In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
As rebuttal evidence, the appellants have submitted under
37 CFR § 1.132 a declaration executed by Dr. Horst Zinke in
1994 and a declaration executed by Dr. Horst Zinke in 1995.
Each of these declarations compares the same prior art
compound (i.e., the compound of British reference Example 32
and European reference Example 1, which is said to be the
closest prior art) with two compounds within the scope of
independent claim 1 (i.e., the compound of specification
Example 10 in the 1994 declaration and the compound of
specification Example 4 in the 1995 declaration). On page 3
of these respective declarations, the inventive compound is
said to improve antiwear properties "significantly more" than
the prior art compound which is a result said to be
"surprising."
This declaration evidence is deficient in a number of
respects.
In the first place, the rebuttal evidence is limited to
only two of the myriad number of compounds encompassed by
appealed independent claim 1 and thus is considerably more
Appeal No. 1997-1875
Application No. 08/451,378
6
narrow in scope than the here claimed subject matter. It is
well established that evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with
the claims to which it pertains and that evidence which is
considerably more narrow in scope than the claimed subject
matter is not sufficient to rebut a prima facie case. In re
Dill, 604 F.2d 1356, 1360, 202 USPQ 805, 808 (CCPA 1979).
Thus, the appellants' evidence of nonobviousness is deficient
in that it does not show the class of compounds defined by
their independent claim to be unexpectedly superior as a class
to the comparison prior art compounds. In re Susi, 440 F.2d
442, 446, 169 USPQ 423, 426 (CCPA 1971).
The appellants argue "the examiner has not met the burden
of presenting objective evidence or sound scientific reasoning
to support the conclusion that all of the claimed compounds
would not be expected to have a stabilizing effect similar to
the [inventive] compounds exemplified in the two Zinke
Declarations" (Brief, page 7). It is, however, the
appellants' burden to show that their claimed compounds as a
class possess the superiority asserted in the declarations.
In re Susi, id. Regardless, there is in fact evidence and
Appeal No. 1997-1875
Application No. 08/451,378
7
reasoning to support the proposition that the improvement
reflected by the two inventive compounds in the declarations
would not be exhibited by the class of compounds defined by
independent claim 1.
For one thing, this class of compounds varies widely in
structure. Even focusing only on the linking group R (which3
the appellants identify as the difference between their
claimed compounds and the prior art compounds), it is
undeniable that the substituents embraced by this group vary
widely in terms of chemical elements and structures (e.g.,
compare the first and the last two R substituents listed in3
appealed claim 1). It is reasonable to conclude that the here
claimed compounds containing such wide chemical variation
would likewise possess widely varying properties and thus
would not necessarily exhibit as a class the improvement shown
for the two inventive compounds tested in the Zinke
declarations.
Furthermore, these declarations reflect that the superior
antiwear properties of the inventive compounds in comparison
with the compound of the applied prior art amounts to an
improvement of approximately 12% (e.g., 0.092 divided by 0.082
Appeal No. 1997-1875
Application No. 08/451,378
8
per the 1994 declaration equals 1.12). Significantly, Table
II on specification page 16 reveals that the antiwear
properties for the inventive compound of Example number 4 are
superior to those for the inventive compound of Example number
8 by this same approximate amount of 12% (i.e., 0.104 divided
by 0.093 equals 1.12). In other words, the antiwear
properties of the here claimed compounds appear to vary in
comparison with one another to the same extent as in
comparison to the prior art compound tested in the Zinke
declarations.
This last mentioned circumstance supports the conclusion
that, while the antiwear properties of certain here claimed
compounds will be superior to those of the tested prior art
compound, the antiwear properties of other claimed compounds
will correspond to those of the prior art compound. That is,
the antiwear properties of these other claimed compounds will
be 12% inferior to certain claimed compounds as reflected by
specification Table II and thus will correspond to the
antiwear property of the tested prior art compound which is
shown by the Zinke declarations to be 12% inferior to the
tested inventive compounds. For this reason, it is
Appeal No. 1997-1875
Application No. 08/451,378
9
appropriate to conclude that the here claimed compounds as a
class would not exhibit the improvement shown in the Zinke
declarations.
In light of the foregoing, it is clear that the
appellants' declaration evidence of nonobviousness is
considerably more narrow in scope than the appealed claims and
thus insufficient to rebut the examiner's reference evidence
of obviousness.
This declaration evidence is also deficient in another
respect. Specifically, the record before us does not support
the conclusion that the antiwear property improvement shown in
these declarations would have been unexpected by an artisan
with ordinary skill. Certainly, the declarations themselves
contain no express statements that the improved results are
unexpected. More importantly, the record contains evidence
which reflects that these improvements constitute merely
typical variations in this art and thus would have been
expected rather than unexpected. This last mentioned evidence
constitutes the variation in antiwear properties discussed
above. By way of reiteration, whether the here claimed
compounds are compared to each other or compared to the prior
Appeal No. 1997-1875
Application No. 08/451,378
10
art, the antiwear properties appear to vary by the same
amount, namely, approximately 12%. This fact evinces that a
12% variation in antiwear properties is typical in this art
and thus expected rather than unexpected.
In summary, it is our determination that the appellants'
evidence of nonobviousness is not commensurate in scope with
the claims to which it pertains and fails to show that the
improved results would have been unexpected by one having an
ordinary level of skill in this art. As a consequence, we
consider all of the evidence of record, on balance, to weigh
most heavily in favor of an obviousness conclusion. We shall
sustain, therefore, the examiner's § 103 rejection of claims 1
through 13 as being unpatentable over the British reference to
Miles or the U.S. patent to Miles or the European reference to
Umemoto.
The decision of the examiner is affirmed.

Appeal No. 1997-1875
Application No. 08/451,378
11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
lp
Appeal No. 1997-1875
Application No. 08/451,378
12
CIBA SPECIALTY CHEMICALS CORP.
PATENT DEPARTMENT
540 WHITE PLAINS ROAD
P.O. BOX 2005
TARRYTOWN, NY 10591-9005
Appeal No. 1997-1875
Application No. 08/451,378
13
APPENDIX
1. A compound of formula
wherein
R and R are each independently of the other C -C alkyl, C -C1 2 3 18 5 12
cycloalkyl, C -C cycloalkylmethyl, C -C bicycloalkylmethyl,5 6 9 10
C -C tricycloalkylmethyl, phenyl,9 10
C -C alkylphenyl or, taken together, are 7 24
Appeal No. 1997-1875
Application No. 08/451,378
14
, C -C alkylene 4 12
which
is
interr
upted
by -O-
,-S-,
or -
NR -, is a group of 4
R is hydrogen, C -C alkyl, phenyl-C -C alkyl, phenyl or C -C4 1 18 1 4 1 6
alkyl-substituted phenyl,
R is hydrogen or methyl, and5
b is an integer from 4 to 6.

Leticia
Appeal No. 1997-1875
Application No. 08/451,378
APJ GARRIS
APJ WALTZ
APJ TIMM
DECISION:
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: May 17, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT