Cornelis H. M. Boons

Patent Trials and Appeals Board

Dec 17, 2019

14934541 - (D) (P.T.A.B. Dec. 17, 2019)

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.
14/934,541 11/06/2015 Cornelis H. M. Boons T-8891D (538-276) 9026
14322 7590 12/17/2019
Michael E. Carmen, Esq.
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
bmg@rml-law.com
mec@rml-law.com
nyoffice@rml-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CORNELIS H. M. BOONS
____________

Appeal 2019-002327
Application 14/934,541
Technology Center 1700
____________

Before CATHERINE Q. TIMM, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1, 4–13, 15, 21, and 25.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Chevron Oronite Technology B.V. as the
real party in interest. Appeal Brief filed September 12, 2018 (“Appeal Br.”)
at 2.
2 Final Office Action entered March 9, 2018 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a marine diesel cylinder lubricating oil composition.
Appeal Br. 2–4. Claim 1 illustrates the subject matter on appeal, and is
reproduced below with contested language italicized:
1. A marine diesel cylinder lubricating oil composition
comprising:
(a) a major amount of one or more Group II basestocks,
(b) a detergent composition comprising (i) one or more
alkaline earth metal salts of an alkylsubstituted
hydroxyaromatic carboxylic acid having a total base number
(TBN) greater than 250, and (ii) one or more high overbased
alkyl aromatic sulfonic acids or salts thereof; wherein the
aromatic moiety of the alkyl aromatic sulfonic acids or salts
thereof contains no hydroxyl groups; and
(c) a marine diesel cylinder lubricating oil composition
additive selected from the group consisting of an ashless
antioxidant, ashless dispersant, other detergent, rust inhibitor,
dehazing agent, demulsifying agent, metal deactivating agent,
ashless friction modifier, pour point depressant, antifoaming
agent, co-solvent, corrosion-inhibitor, dyes, extreme pressure
agent and mixtures thereof,
and wherein the marine diesel cylinder lubricating oil
composition has a TBN of about 40 to about 70.

Appeal Br. 11 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1, 4–13, 15, 21, and
25 under 35 U.S.C. § 103 as unpatentable over Nelson et al. (US
2013/0261313 Al, published October 3, 2013) in the Examiner’s Answer
entered November 23, 2018 (“Ans.”).

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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1, 4–13, 15, 21, and 25 under 35 U.S.C. § 103 for the reasons set
forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant argues claims 1, 4–13, 15, 21, and 25 as a group on the
basis of independent claims 1 and 25, which Appellant argues together.
Appeal Br. 4–9. We accordingly select claim 1 as representative, and decide
the appeal as to claims 1, 4–13, 15, 21, and 25 based on claim 1 alone. 37
C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites a marine diesel cylinder lubricating oil composition
comprising, in part, a marine diesel cylinder lubricating oil composition
additive selected from the group consisting of an ashless antioxidant, ashless
dispersant, other detergent, rust inhibitor, dehazing agent, demulsifying
agent, metal deactivating agent, ashless friction modifier, pour point
depressant, antifoaming agent, co-solvent, corrosion-inhibitor, dyes, extreme
pressure agent and mixtures thereof.
Nelson discloses a lubricating oil composition containing a
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molybdated succinimide complex, which is used as a marine cylinder
lubricant in crosshead diesel engines. Nelson ¶¶ 11, 13, 89.
Appellant argues that the molybdated succinimide complex included
in Nelson’s lubricating oil composition is an ash-producing friction
modifier. Appeal Br. 4–6. Appellant argues that the lubricating oil
composition of claim 1 “requires an ashless friction modifier and excludes
an ash-producing friction modifier” due to the “closed off” nature of the
“consisting of” phase recited in the Markush group in the claim. Id.
Appellant argues that under Multilayer Stretch Cling Film Holdings, Inc., v.
Berry Plastics Corporation, 831 F.3d 1350, 1360–61 (Fed. Cir 2016), claim
1 is “closed off to any marine diesel cylinder lubricating oil composition
additive not recited in the Markush group,” and, therefore, excludes
Nelson’s molybdenum succinimide complex ash producing friction
modifier. Appeal Br. 7–9.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons well-expressed by the Examiner in the
Answer, and discussed below.
A “Markush group” is a claim element expressed as a list of
alternatives preceded by the phrase “consisting of,” which closes the group
to alternatives not explicitly recited, and requires selection of a member
from only the specified group of alternatives. Abbott Laboratories v. Baxter
Pharmaceutical Products, Inc., 334 F.3d 1274, 1280–1281 (Fed. Cir. 2003).
A “comprising” transitional phrase between the preamble and body of
a composition claim opens the composition to inclusion of unrecited
materials or components. Gillette Co. v. Energizer Holdings, Inc. 405 F.3d
1367, 1371–1372 (Fed. Cir. 2005) (“The word ‘comprising’ transitioning
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from the preamble to the body signals that the entire claim is presumptively
open-ended.”); In re Baxter, 656 F.2d 679, 686–87 (CCPA 1981) (“As long
as one of the monomers in the reaction is [the claimed] propylene, any other
monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”).
Use of “consisting of” within the body of a claim, rather than
immediately following the preamble, closes only the element preceded by
“consisting of,” and does not negate the open nature of a “comprising”
transition present in the claim between the preamble and body.
Mannesmann Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279,
1282 (Fed. Cir. 1986) (confirming that the phrase “consisting of” appearing
in a clause of a claim specifically limits only the element set forth in that
clause); In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004) (“Crish’s
principal argument here that the claims also contain the closed-ended
transition term ‘consists,’ and that that term narrows the entire claim, is
unpersuasive. The reasonable interpretation of the claims containing both of
the terms ‘comprising’ and ‘consists’ is that the term ‘consists’ limits the
‘said portion’ language to the subsequently recited numbered nucleotides,
but the earlier term ‘comprising’ means that the claim can include that
portion plus other nucleotides.”).
In the present case, the “consisting of” phrase recited within the body
of claim 1 introduces a list of alternative marine diesel cylinder lubricating
oil composition additives (a Markush group), one or more of which must be
included in the claimed lubricating oil composition. The “consisting of”
phrase closes the group of additives to those not explicitly recited in the
claim, but like the situation in Crish set forth above, the “consisting of”
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phrase in the body of claim 1 does not negate the open nature of the claim
imparted by the “comprising” transition that immediately follows the
preamble. Crish, 393 F.3d at 1257.
As the Examiner explains (Ans. 7), because claim 1 recites a
lubricating oil composition, under a broadest reasonable interpretation, any
material included in the composition other than the basestock would be an
“additive,” consistent with the description provided in Appellant’s
Specification. Spec. ¶¶ 108, 136; In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications,
“the PTO must give claims their broadest reasonable construction consistent
with the specification . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.”). Interpreting the “consisting of” phrase in the body of claim
1 as Appellant asserts to close the claim “to any marine diesel cylinder
lubricating oil composition additive not recited in the Markush group,”
would, therefore, effectively change the “comprising” transition that follows
the preamble of claim 1 to a “consisting of” transition, contrary to the
principles of Mannesmann and Crish set forth above.
Accordingly, as the Examiner determines, although the “consisting
of” transition recited in the body of claim 1 requires inclusion of one or
more of the explicitly recited additives in the claimed lubricating oil
composition, the “comprising” transition that immediately follows the
preamble of claim 1 opens the claim to inclusion of unrecited materials.
Accordingly, claim 1 does not exclude the molybdated succinimide complex
disclosed in Nelson from the claimed composition, regardless of whether the
complex is an ash-producing friction modifier as Appellant asserts. Ans. 6–
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7.
As to Appellant’s argument that under Multilayer claim 1 excludes
Nelson’s molybdenum succinimide complex ash producing friction
modifier, the claim at issue in Multilayer recites, with emphasis added:
1. A multi-layer, thermoplastic stretch wrap film containing
seven separately identifiable polymeric layers, comprising:
(a) two identifiable outer layers, at least one of which having a
cling performance of at least 100 grams/inch, said outer layer
being selected from the group consisting of linear low density
polyethylene, very low density polyethylene, and ultra low
density polyethylene resins, said resins being homopolymers,
copolymers, or terpolymers, of ethylene and alpha-olefins; and
(b) five identifiable inner layers, with each layer being selected
from the group consisting of linear low density polyethylene,
very low density polyethylene, ultra low density polyethylene,
and metallocene-catalyzed linear low density polyethylene
resins; said resins are homopolymers, copolymers, or
terpolymers, of ethylene and C3 to C20 alpha-olefins;
wherein each of said two outer layers and each of said five
inner layers have different compositional properties when
compared to a neighboring layer.
Multilayer, 831 F.3d 1350, 1351 (Fed. Cir. 2016).
The court in Multilayer determined that “the Markush group of
element (b) must be construed as closed to resins other than LLDPE,
VLDPE, ULDPE, and mLLDPE.” Multilayer, 831 F.3d at 1358. The
“consisting of” transition in the body of the claim at issue in Multilayer,
therefore, limits the composition of the five inner layers of the claimed film
to the recited resins only, and closes the composition of these layers to
unrecited resins, analogous to the present situation where the “consisting of”
transition in the body of claim 1 limits the lubricating oil composition
additives to those explicitly recited, and closes the group of additives to
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those not explicitly recited in the claim. The “comprising” transitional
phrase that immediately follows the preamble of the claim at issue in
Multilayer, however, allows additional, unrecited layers to be included in the
claimed film, analogous to the present situation where the “comprising”
transition in claim 1 allows additional, unrecited materials to be included in
the claimed composition. Multilayer, 831 F.3d at 1358 (explaining that in
contrast to “consisting of,” “the alternative transitional term ‘comprising’
creates a presumption that the recited elements are only a part of the device,
that the claim does not exclude additional, unrecited elements.” (Citing
Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246
F.3d 1336, 1348 (Fed. Cir. 2001)).
Contrary to Appellant’s arguments, Multilayer, therefore, does not
contradict the principles of Mannesmann and Crish set forth above, and,
accordingly, does not require claim 1 to be interpreted to exclude Nelson’s
molybdenum succinimide complex from the claimed composition.
We, therefore, sustain the Examiner’s rejection of claims 1, 4–13, 15,
21, and 25 under 35 U.S.C. § 103.
CONCLUSION
Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–13, 15,
21, 25
103 Nelson 1, 4–13, 15,
21, 25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED