2020000375 (P.T.A.B. Oct. 1, 2020)

EXXONMOBIL RESEARCH AND ENGINEERING COMPANY et al.

Patent Trials and Appeals BoardOct 1, 2020

2020000375 (P.T.A.B. Oct. 1, 2020)

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. 15/115,766 08/01/2016 Ko ONODERA 172370 3665 25944 7590 10/01/2020 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 10/01/2020 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KO ONODERA, SHUZO NEMOTO, TOMOHIRO KATO, KOSUKE FUJIMOTO, and MINORU YAMASHITA Appeal 2020-000375 Application 15/115,766 Technology Center 1700 Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3–10. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on September 17, 2020. We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Exxonmobil Research and Engineering Co. and Toyota Jidosha Kabushiki Kaisha. Appeal Br. 1. Appeal 2020-000375 Application 15/115,766 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A lubricating oil composition adapted for use in a supercharged gasoline engine, comprising: a lubricating oil base oil, a compound having at least one element selected from calcium and magnesium a compound having at least one element selected from molybdenum and phosphorous, and an ashless dispersant having nitrogen; wherein, X as determined from following equation (1): X = ([Ca] + 0.5[Mg]) × 8 - [Mo] × 8 - [P] × 30 (1) wherein [Ca], [Mg], [Mo] and [P] in equation (1) respectively represent the concentrations (wt%) of calcium, magnesium, molybdenum and phosphorous in the lubricating oil composition, satisfies the expression X ≤ -1.68; Y as determined from following equation (2): Y = [Ca] + 1.65[Mg] + [N] (2) wherein [Ca], [Mg] and [N] in equation (2) respectively represent the concentrations (wt%) of calcium, magnesium and nitrogen derived from ashless dispersant in the lubricating oil composition, satisfies the expression Y ≥ 0.18; and, Z as determined from following equation (3): Z = [N] / ([Ca] + [Mg]) (3) Appeal 2020-000375 Application 15/115,766 3 wherein [Ca], [Mg] and [N] respectively represent the concentrations (wt%) of calcium, magnesium and nitrogen derived from an ashless dispersant in the lubricating oil composition, further satisfies the expression 0.3 ≤ Z ≤ 1.5. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Kasai US 7,820,599 B2 Oct. 26, 2010 REJECTION Claims 1 and 3–10 are rejected under 35 U.S.C. § 103 as being unpatentable over Kasai. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse the Examiner’s rejection on appeal Appeal 2020-000375 Application 15/115,766 4 essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. We refer to the Examiner’s position made on pages 3–5 of the Final Office Action and on pages 3–6 of the Answer. Among other requirements, claim 1 requires that X ≤ - 1.68. It is the Examiner’s position that although this claim requirement is not specifically met by the examples of Kasai, the entire disclosure of Kasai is not limited to the six examples therein, but more broadly teaches that the entire ranges of phosphorus, molybdenum, calcium, magnesium and nitrogen contents are acceptable for use in the lubricating oil compositions. Final Act. 5. The Examiner states that because Kasai teaches that the entire ranges of the elements are suitable, each of the various combinations of these elements would be presumptively effective in the disclosed lubricant compositions. Id. See also Ans. 5–6. We agree with Appellant that while Kasai is not limited to the examples, the record before us lacks articulated reasoning, based on the disclosure of Kasai as a whole, as to why one of ordinary skill in the art would consider first, that the expression for X, i.e., X = ([Ca] + 0.5[Mg]) × 8 - [Mo] × 8 - [P] × 30, is significant, and two, why amounts of Ca, Mg, Mo and O should be adjusted so that X < -1.68. Appeal Br. 7. We thus are persuaded that the rejection lacks proper motivation for the modifications as proposed by the Examiner in the rejection. Reply Br. 1–2. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention Appeal 2020-000375 Application 15/115,766 5 does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at appellant’s claimed invention has not been explained); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”); see also, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In view of the above, we reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–10 103 Kasai 1, 3–10 REVERSED