Housel, Tyler et al.Download PDFPatent Trials and Appeals BoardMay 27, 202012477795 - (D) (P.T.A.B. May. 27, 2020) Copy Citation 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. 12/477,795 06/03/2009 Tyler Housel 029550.008US1 8196 25461 7590 05/27/2020 SMITH, GAMBRELL & RUSSELL SUITE 3100, PROMENADE II 1230 PEACHTREE STREET, N.E. ATLANTA, GA 30309-3592 EXAMINER OLADAPO, TAIWO ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 05/27/2020 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): docketing@sgrlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TYLER HOUSEL and ROCCO BURGO Appeal 2019-005497 Application 12/477,795 Technology Center 1700 Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 70–95 under 35 U.S.C. § 103(a) as unpatentable over Burgo (WO 2006/086752 A1, pub. Aug. 17, 2006)3 in 1 This Decision references the following documents: Specification filed June 3, 2009 (“Spec.”); Final Office Action dated Oct. 23, 2018 (“Final”); Appeal Brief filed Mar. 7, 2019 (“Appeal Br.”); Claims Appendix filed Mar. 26, 2019; Examiner’s Answer dated May 16, 2019 (“Ans.”); and Reply Brief filed July 11, 2019 (“Reply Br.”). 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Zschimmer & Schwarz, Inc. Appeal Br. 2. 3 The Examiner cites to US 2008/0317964 A1, pub. Dec. 25, 2008, the English language equivalent. Appeal 2019-005497 Application 12/477,795 2 view of McHenry (US 6,436,881 B1, iss. Aug. 20, 2002) as evidenced by, or in view of, Wolf (US 5,102,567, iss. Apr. 7, 1992).4 An oral hearing was held on May 18, 2020. We AFFIRM. CLAIMED SUBJECT MATTER According to the Specification, lubricants used in moving parts of food processing equipment can be subject to high temperatures. Spec. ¶ 3. For example, food ingredients can reach temperatures of 300 °C or higher for one or more hours, and the processing equipment likewise is subject to the same or higher temperatures. Id. Lubricants that do not evaporate or solidify at the peak processing temperature, but maintain their structure under extremes of temperature are essential in many commercial, domestic and industrial food processing applications. Id. ¶ 4. The United States regulates food processing equipment lubricants “as ‘food additives’ in recognition of the fact that the substances may be incidentally incorporated into foodstuffs during the manufacturing process.” Id. ¶ 8. “For use as a lubricant approved for incidental contact with food, the lubricant must only contain substances that are: (i) generally recognized as safe (GRAS) for use in food, (ii) specifically identified in the FDA regulations as being safe, or (iii) approved or sanctioned by the FDA prior to use.” Id. ¶ 9. If this criteria is met, “NSF International[5] grants the lubricant 4 We have jurisdiction under 35 U.S.C. § 6(b). 5 According to the Specification, “NSF International . . . maintains uniform standards for products such as incidental food additives and lubricants and its ratings are relied upon throughout the world by processers.” Id. ¶ 10. Appeal 2019-005497 Application 12/477,795 3 composition a rating of H1, indicating that the substance is a lubricant suitable for food contact.” Id. ¶ 10. The Specification discloses that many H1-ranked lubricants have poor performance at high temperatures. Id. ¶ 11. The invention is said to address this problem by providing a lubricant formulation having “superior high temperature fluidity that can be used to lubricate food processing machinery that is routinely exposed to high temperatures and which is safe for food contact.” Id. Claim 70, reproduced below, is illustrative of the claimed subject matter: 70. A method of lubricating food processing equipment used at high temperatures where the lubricant incidentally contacts the food processed comprising: applying a high temperature H1 food grade lubricant composition to the food processing equipment, wherein the high temperature H1 food grade lubricant comprises: a polyol polyester base oil that consists essentially of a reaction product of at least one neopentyl polyhydric alcohol and a mixture of heptanoic acid, pentanoic acid and isononanoic acid, and an antioxidant system of three or more antioxidants, wherein the antioxidant system is present in an amount of about 1 % to about 5% by weight of the H1 food grade lubricant, and wherein the high temperature H1 food grade lubricant has less than 46% residue formation and greater than 3% liquid fraction remaining after an oven pan test performed at 260 °C for 20 hours. Claims Appendix 2. THE APPLIED PRIOR ART Burgo discloses lubricant compositions useful for high temperature applications, such as oven chain oil applications. Burgo ¶ 2. Burgo discloses that “[c]onveyored oven chain systems are currently required in many Appeal 2019-005497 Application 12/477,795 4 industrial applications such as food baking.” Id. ¶ 3. Burgo discloses that the lubricant composition comprises at least one polyol polyester polymer made from the reaction of at least one neopentyl polyhydric alcohol, at least one dicarboxylic acid, and at least one monocarboxylic acid. Id. ¶ 23. “Particularly useful branched chain acids are 2-ethylhexanoic acid and 3,5,5- trimethylhexanoic acid . . . .” Id. ¶ 8. “Preferred monocarboxylic acids are linear and contain from about 5 to about 12 carbon atoms, . . . [and include] pentanoic acid, hexanoic acid, heptanoic acid, octanoic acid, nonanoic acid, decanoic acid, and mixtures thereof.” Id. ¶ 39 (emphasis added). Burgo discloses that “[t]o form the final lubricant composition, at least one other material can be added, . . . includ[ing] . . . a polyol polyester.” Id. ¶ 30. Burgo teaches an embodiment in which “the polyol polyester polymer . . . comprises at least one ester formed from the reaction of trimethylolpropane, monopentaerythritol, dipentaerythritol, and tripentaerythritol with at least one carboxylic acid containing from 5 to 12 carbon atoms.” Id. at claim 19 (emphasis added); see also id. ¶ 23. Burgo discloses adding at least one other material to the lubricant composition, such as one or more “antioxidant[s] present at a level from about 0.1 to about 6 percent by weight of the final lubricant composition.” Id. ¶ 30. Burgo states that the final lubricant composition is preferably suitable “for direct food contact applications.” Id. ¶ 33. Wolf discloses a high performance food grade lubricating oil that is said to “effectively lubricate[] bearings, gears, and slide mechanisms present in food industry equipment.” Wolf Abstract. Wolf discloses that “[d]ue to the importance of ensuring and maintaining safeguards and standards of quality for food products, the food industry must comply with the rules and Appeal 2019-005497 Application 12/477,795 5 regulations set forth by the United States Department of Agriculture (USDA).” Id. at 1:22–26. Wolf teaches that “lubricants and other substances which are susceptible to incidental food contact are considered indirect food additives under USDA regulations.” Id. at 1:39–42. Wolf discloses that “[t]he most stringent classification, H-1, is for lubricants approved for incidental food contact.” Id. at 1:44–46. McHenry discloses synthetic lubricants for use in high temperature static chain oil applications (McHenry Abstract), including “chain and drive gear assemblies that are associated with ovens” (id. at 1:18–19). “The lubricant includes a base stock based on a polyol ester that is the reaction product of a neopentyl polyol including a major proportion of dipentaerythritol and a mixture of C5 to C12 carboxylic acids.” Id. at Abstract (emphasis added); see also id. at 3:62–66, 4:11–13. OPINION The Examiner rejected claims 70–95 over the combination of Burgo, McHenry, and Wolf. See Final 3–6. The Appellant argues in support of patentability of the claims as a group. See generally Appeal Br. 7–11.6 Accordingly, all claims stand or fall with claim 70. See 37 C.F.R. § 41.37(c)(iv)(2018). The Examiner found that Burgo discloses the claim 70 method except that Burgo does not explicitly teach (1) that the lubricant composition applied to the processing equipment is a “high temperature H1 food grade lubricant,” (2) the recited carboxylic acid “mixture of heptanoic acid, pentanoic acid and isononanoic acid” used to prepare the polyol polyester 6 The Appeal Brief and Reply Brief pages are unnumbered. Our numbering begins with the first page of each brief. Appeal 2019-005497 Application 12/477,795 6 base oil, and (3) that the “lubricant has less than 46% residue formation and greater than 3% liquid fraction remaining after an oven pan test performed at 260 °C for 20 hours.” See Final 3–5. As to the claim 70 requirement that the lubricant composition is a “high temperature H1 food grade lubricant,” the Examiner found that Wolf’s “teach[ing] that lubricants susceptible to incidental food contact are stringently classified under H-1” would have suggested formulating Burgo’s lubricant composition to meet H1 rating requirements when used in food applications. Final 4. The Appellant disputes this finding, arguing that “because Burgo teaches lubricants for direct food contact,” Burgo teaches away from H1 lubricants. Appeal Br. 9 (citing Burgo ¶ 33); see also Reply Br. 3. The Appellant argues that “H1 lubricants by definition are indirect or incidental food contact lubricants” (Appeal Br. 8 (citing 21 C.F.R. § 178.3570 (Appeal Br. Exhibit A))), whereas “[d]irect food contact lubricants are typically used to clean and prevent rust on hooks, trolleys, and other such equipment in which food comes into direct contact with the lubricated surface” (id. at 9). The Appellant, thus, contends that “[t]he term ‘direct food contact’ itself indicates that the lubricant of Burgo is not an H1 lubricant.” Id. at 8. The Appellant’s arguments are not persuasive for the reasons explained in the Answer. See Ans. 9–10. We add the following: As an initial matter, we note that the Appellant has not identified evidence to support its contention that the ordinary artisan would have understood Burgo’s reference to “direct food contact applications” as referring to “lubricants . . . typically used to clean and prevent rust on hooks, trolleys, and other such equipment in which food comes into direct contact Appeal 2019-005497 Application 12/477,795 7 with the lubricated surface.” See Appeal Br. 9. The Lawate reference,7 attached to the inventor’s (Dr. Housel’s) Declaration under 37 C.F.R. § 1.132 (Appeal Br. Exhibit B), describes “H3 soluble oils” as lubricants that “may be applied to hooks, trolleys and similar equipment to clean and prevent rust,” but specifies that “[t]he portions of the equipment that contact edible products must be clean and free of the oil before reuse.” Lawate 1. In other words, Lawate teaches that lubricants used for hooks, trolleys, and the like are not suitable for direct contact with food. Lawate discloses that besides H1 lubricants and H3 soluble oils, there is one additional “main categor[y] of lubricants used in the food industry:” H2 lubricants, which are “compounds [that] may be used as a lubricant, release agent or antirust film on equipment and machine parts or in closed systems in locations where there is no possibility of the lubricant or lubricated part contacting edible products.” Lawate 1. Thus, Lawate’s disclosure indicates that only H1 lubricants are suitable for contact with food. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994). The Appellant’s arguments do not persuade us that the ordinary artisan would have been discouraged from formulating Burgo’s lubricant composition to meet H1 rating requirements given Burgo’s stated preference for a final lubricant composition capable of approval for “direct food contact applications,” Burgo’s explicit statement that the invention 7 Saurabh Lawate, “What You Need to Know About Food-Grade Lubricants,” Machinery Lubrication Magazine (July 2007). Appeal 2019-005497 Application 12/477,795 8 relates to lubricants for oven chain oil applications such as conveyored oven chain systems used for food baking (i.e., the same application in which the Appellant’s lubricant composition is used (compare Burgo ¶¶ 2, 3, with Spec. ¶ 39)), and the Appellant’s admission that at the time of the invention, it was known that H1 lubricants were the only category of food industry lubricants suitable for use on machine parts and equipment in locations where the lubricated part is potentially exposed to food (see Lawate 1, cited in Decl. ¶ 11). In sum, the Appellant has not identified reversible error in the Examiner’s finding that Wolf would have suggested formulating Burgo’s lubricant composition to meet H1 rating requirements when used in food applications. As to the claimed carboxylic acid “mixture of heptanoic acid, pentanoic acid and isononanoic acid” used to prepare the polyol polyester base oil, the Appellant contends that the Examiner reversibly erred in finding that the ordinary artisan would have included in Burgo’s composition a polyol ester that is the reaction product of dipentaerythritol and a mixture of pentanoic, heptanoic, and isononanoic acids, as taught by McHenry, as the additional polyol ester of Burgo. Appeal Br. 9; see Final 4. The Appellant argues, more specifically, that “McHenry does not discuss any food-grade applications for [its] lubricant composition and would not achieve H1 classification due to the fact that the amounts of additives added to the composition significantly exceed the limitations set forth by the FDA and NSF.” Appeal Br. 9. The Appellant’s arguments are not persuasive because they do not identify error in the facts and reasons relied on by the Examiner in rejecting the claims. The Examiner relied on McHenry solely for a teaching of Appeal 2019-005497 Application 12/477,795 9 conventional polyol esters used in lubricant formulations. See Ans. 8. Burgo teaches as suitable for use in its lubricant composition the same neopentyl polyhydric alcohol (dipentaerythritol) and monocarboxylic acids McHenry uses to prepare its polyol ester. Compare Burgo ¶¶ 27, 29, with McHenry 3:62–66, 4:11–13. The Appellant also fails to explain persuasively why the ordinary artisan would not have possessed the requisite knowledge and skills to formulate Burgo’s composition, as modified to include McHenry’s polyol ester, to achieve H1 classification given Wolf’s indication that at the time of the invention, a list of H1 approved compounds was available from the Food Safety and Inspection Service of the United States Department of Agriculture. See Wolf 1:12–46; Ans. 9. Moreover, in assessing a broadest reasonable claim construction where a potentially exclusionary “consisting essentially of” transitional phrase is involved, it is appropriate that the Appellant bears the burden of: (1) showing the basic and novel characteristics of their claimed invention, and (2) establishing how those characteristics would be materially changed by any allegedly excluded component of an applied reference. See In re De Lajarte, 337 F.2d 870, 873– 74 (CCPA 1964). As explained by the Examiner, the Appellant has not identified with sufficient specificity persuasive evidence that the presence of dicarboxylic acid, or any other additive not explicitly listed in claim 70, in Burgo’s polyol polyester base oil would affect the basic and novel properties of the claimed polyester base oil. Ans. 7, 11. As to the claim 70 requirement that the “lubricant has less than 46% residue formation and greater than 3% liquid fraction remaining after an oven pan test performed at 260 °C for 20 hours,” the Examiner found that although the references do not explicitly disclose these properties, “the use Appeal 2019-005497 Application 12/477,795 10 of similar polyol ester and H1 additive would be expected to provide the same properties of residue formation and liquid fraction.” Final 4–5. The Appellant, however, alleges that the claimed invention achieves unexpected results. Appeal Br. 10. The Appellant relies on Mr. Housel’s declaration testimony, wherein Mr. Housel discusses the results of oven pan tests on Burgo’s composition and the claimed composition. Id. The Appellant also relies on Specification Table 7 which compares the results of oven pan tests on Burgo’s composition, McHenry’s composition, and the claimed composition. Id. We have reviewed the Appellant’s evidence, but agree with the Examiner that it is not persuasive of unexpected results because the comparisons are not commensurate in scope with the claims. See Ans. 12–14 (providing a detailed analysis of the evidence). Although the Appellant’s evidence may show unexpected results in the tested embodiments, the Appellant has not provided an adequate basis to support a conclusion that other embodiments falling within the scope of claim 70 would be expected to behave in the same manner. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). In sum, taking into account the Appellant’s evidence of unexpected results, we determine that a preponderance of the evidence in this appeal record weighs in favor of obviousness as to independent claim 70. Accordingly, we sustain the rejection of claims 70–95 for the reasons stated in the Final Office Action, the Answer, and above. Appeal 2019-005497 Application 12/477,795 11 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 70–95 103(a) Burgo, McHenry, Wolf 70–95 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation