Ex Parte Boons

Patent Trial and Appeal Board

Mar 29, 2018

14534407 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/534,407 11/06/2014
14322 7590 04/02/2018
Michael E. Carmen, Esq.
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
FIRST NAMED INVENTOR
Cornelis H.M. Boons
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
T-8891B (538-258) 5215
EXAMINER
V ASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
nyoffice@rml-law.com
mec@rml-law.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIS H.M. BOONS
Appeal2017-005893
Application 14/534,407
Technology Center 1700
Before JEFFREY B. ROBERTSON, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 2, and 5-23. 3 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to the Specification filed November 6, 2014
("Spec."), the Final Office Action entered March 25, 2016 ("Final Act."),
the Advisory Action entered June 29, 2016 ("Adv. Act."), the Appeal Brief
filed September 30, 2016 ("Appeal Br."), the Examiner's Answer entered
December 20, 2016 ("Ans."), and the Reply Brief filed February 21, 2017
("Reply Br.").
2 Appellant is the Applicant, Chevron Oronite Technology B.V., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 2.
3 Claims 3 and 4 were canceled, and claims 22 and 23 were added by
Appellant in the Amendment under 37 C.F.R. § 1.116 filed June 20, 2016.
This Amendment was entered by the Examiner. Adv. Act. 1.
Appeal2017-005893
Application 14/534,407
The subject matter of the claims on appeal relates to a marine diesel
cylinder lubricating oil composition, and a method for lubricating a marine
two-stroke crosshead diesel engine with this marine diesel cylinder lubricant
composition. Spec. i-fi-f l, 16. According to Appellant's Specification, a
marine diesel cylinder oil is a lubricant used in the cylinder lubrication of a
low speed or medium speed two-stroke crosshead marine diesel engine. Id.
i120.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, with formatting added, is illustrative of the claims on appeal.
1. A marine diesel cylinder lubricating oil composition which
compnses
(a) a major amount of one or more Group I basestocks,
and
(b) a detergent composition comprising
(i) one or more alkaline earth metal salts of an
alkyl-substituted hydroxyaromatic carboxylic acid having
a total base number (TBN) of about 100 to about 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
wherein the marine diesel cylinder lubricating oil
composition has a TBN of about 5 to about 120.
Appeal Br. 16 (Claims App.).
Claim 18, the other independent claim on appeal, is directed to a
method for lubricating a marine two-stroke crosshead diesel engine with the
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Application 14/534,407
same marine diesel cylinder lubricating oil composition as recited in claim 1.
Id. at 19.
REJECTIONS 4
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 2, 5-11, 14--18, and 20-23 under 35 U.S.C.
§ 103 as obvious over Jukes (US 2011/0077182 Al, published March 31,
2011) (Ans. 3--4);
Rejection 2: Claims 1, 2, 5-18, and 20-23 under 35 U.S.C. § 103 as
obvious over Jukes in view of Le Coent (US 6,479,440 Bl, issued
November 12, 2002) (Ans. 4--5); and
Rejection 3: Claim 19 under 35 U.S.C. § 103 as obvious over Jukes
in view ofVerlinde (US 2009/0156440 Al, published June 18, 2009)
(Ans. 5---6).
4 The rejection of claims 1, 2, 5-11, 14--18, and 20-21under35 U.S.C.
§ 102(a)(l) as anticipated by Jukes was withdrawn by the Examiner. Adv.
Act. 1-2. Additionally, although included in the statement of Rejections 1-3
(Ans. 3-5), claims 3 and 4 were canceled in an Amendment under 37 C.F.R.
§ 1.116 filed June 20, 2016. Claims 22 and 23 were added in the same
Amendment. Even though the Examiner does not list claims 22 and 23 in
the statement of rejection for Rejections 1 and 2 (Ans. 3--4), Appellant
identifies claims 22 and 23 in their Appeal Brief as rejected under 35 U.S.C.
§ 103 over Jukes alone, or in combination with Le Coent. Appeal Br. 5.
Because the Examiner's Answer does not contradict the indication in the
Appeal Brief (Ans. 3-5), we consider claims 22 and 23 as rejected and
before us in this appeal.
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Application 14/534,407
DISCUSSION
Rejection 1
Appellant argues the claims subject to the first-stated ground of
rejection as a group, and does not present separate patentability arguments
regarding dependent claims 2, 5-11, 14--18, and 20-23. See Appeal Br. 5-
12. Thus, we select independent claim 1 as representative. Dependent
claims 2, 5-11, 14--18, and 20-23 will stand or fall with claim 1. See
37 C.F.R. § 41.37 (c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
first § 103 rejection essentially for the reasons set out by the Examiner in the
Final Office Action and the Answer. We add the following.
The Examiner finds that Jukes teaches a marine system oil
composition for lubrication of mechanical components in marine engines,
for example, two-stroke, crosshead marine diesel engines (Jukes, Abstract)
that includes (a) a Group I base oil (id. i-f 80) and (b) a detergent composition
comprising (i) 0.1 wt.% to 35 wt.% of a calcium salt of an alkyl
hydroxyaromatic carboxylic acid having a total base number (TBN) of 150
(id. at i-fi-1109-110, 170) and (ii) 0.1 wt.% to 20 wt.% of an overbased
calcium alkyl aromatic sulfonate detergent (id. i-fi-1143-144), where the
marine system oil composition has a TBN in the range of between 3.5
and 20 (id. at i-f 153). Ans. 3--4.
Appellant argues that the phrase "marine diesel cylinder lubricating
oil" in claim 1 's preamble "breath[s] life and meaning to the claim," and
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Application 14/534,407
thus, must be considered a limitation of the claim. Appeal Br. 7-8.
Appellant further argues that the rejection must be reversed because Jukes
discloses a system oil, but fails to disclose or suggest a marine diesel
cylinder lubricating oil as recited in claim 1. Id. at 5, 8-9.
The determination of whether a preamble limits a claim is made on a
case-by-case basis in light of the facts in each case; there is no litmus test
defining when a preamble limits the scope of a claim. See Catalina Mktg.
Int'!, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). In
general, a preamble is construed as a limitation "if it recites essential
structure or steps, or if it is 'necessary to give life, meaning, and vitality' to
the claim." Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble is not regarded as
limiting, however, "when the claim body describes a structurally complete
invention such that deletion of the preamble phrase does not affect the
structure or steps of the claimed invention." Catalina, 289 F.3d at 809.
In this case, we agree with the Examiner that claim 1 's preamble is an
intended use and not further limiting of claim 1. Ans. 6. Although the
recitation "the marine diesel cylinder lubricating oil composition has a TBN
of about 5 to about 120" derives antecedent basis from claim l's preamble,
the body of the claim describes a structurally complete composition, and the
preamble here merely states the intended use or purpose of the claimed
composition.
A preponderance of the evidence supports the Examiner's findings
that Jukes teaches or suggests claim l's composition. Ans. 3--4; Jukes,
Abstract, 109-110, 143-144, 153, and 170. Moreover, as the Examiner
correctly explains, because Jukes teaches claim l's composition, Jukes' s
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Application 14/534,407
composition would necessarily function as a marine diesel cylinder
lubricating oil. Final Act. 6; Ans. 6; see In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) ("The discovery of a new property or use of a previously
known composition, even when that property and use are unobvious from
the prior art, can not impart patentability to claims to the known
composition.").
Even if we conclude that claim 1 's preamble is limiting, we are not
persuaded of reversible error in the Examiner's rejection. Appellant
contends that they submitted declaration evidence-a Declaration of
Comelis H.M. Boons executed June 15, 2016 ("the Boons Declaration"),
and a Declaration of Ronald Jukes executed June 13, 2016 ("the Jukes
Declaration"}-that explains the differences between a system oil and a
cylinder oil, and establishes that one skilled in the art would not have looked
to a system oil reference, such as Jukes, when formulating a marine diesel
cylinder lubricating oil. Appeal Br. 6, 10, 11-12. Both the Boons and Jukes
Declarations state that one skilled in the art would not "normally" consider
using the same lubricant in both a cylinder and crankcase of a marine diesel
crosshead engine. Boons Deel. i-f 5; Jukes Deel. i-f 4. However, as the
Examiner correctly explains, Jukes' s paragraph 13 teaches that there are
some instances where a lubricant, such as the lubricant disclosed in
European Patent Application No. 1,728,849, has been used for lubricating
both a cylinder and crankcase of a marine diesel crosshead engine. Ans. 6.
Jukes's teaching supports the Examiner's finding that when viewed as a
whole, Jukes would have reasonably suggested using a marine system oil,
such as Jukes' s system oil, as a cylinder lubricating oil in a marine diesel
crosshead engine. Final Act. 6; Ans. 6-7; In re Preda, 401 F.2d 825, 826
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( CCP A 1968) ("[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.").
Appellant argues that Jukes teaches away from using a marine system
oil as a cylinder oil. Appeal Br. 8-9.
Appellant's argument is not persuasive of reversible error. The fact
that Jukes discloses that a marine system oil and a cylinder oil are typically
separate oils used in a marine diesel engine, would not tum one of ordinary
skill in the art away from using a marine system oil as a cylinder oil. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("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."). Further, as discussed above, although marine system oils are
not normally used as cylinder oils, Jukes teaches or reasonably suggests that
at least in one instance, a lubricating oil has been used for both a cylinder
and a crankcase (system oil). Jukes i-f 13.
In the Reply Brief, Appellant argues that Jukes's paragraph 143 fails
to explicitly disclose "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." Reply Br. 10
(emphasis added).
Appellant's argument is not persuasive of reversible error. Jukes
discloses that suitable detergents for use in its system oil composition
include high overbased or middle overbased detergents. Jukes i-fi-1 71, 105.
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At paragraph 143, Jukes discloses other metal detergents that may be useful
in its oil composition include alkyl or alkenyl aromatic sulfonates, calcium
sulfonates, and alkyl or alkenyl hydroxyl aromatic sulfonates. Thus, a
person of ordinary skill in the art, reading Jukes' s disclosure, would
reasonably understand that Jukes teaches a high overbased calcium alkyl or
alkenyl aromatic sulfonate where the aromatic moiety contains no hydroxyl
groups (claim 1 's component (b)(ii)).
Accordingly, considering the totality of the appeal record, including
due consideration of Appellant's arguments and evidence, a preponderance
of the evidence weighs in favor of the Examiner's conclusion of
obviousness. Therefore, we sustain the Examiner's rejection of claims 1, 2,
5-11, 14--18, and 20-23 under 35 U.S.C. § 103 as obvious over Jukes.
Re} ections 2 and 3
In addressing Rejections 2 and 3, Appellant refers back to the
arguments regarding Jukes discussed in Rejection 1 above. Appeal Br. 13-
14. In addition, Appellant argues that Le Coent and Verlinde do not cure the
deficiencies of Jukes. Id. We do not find these arguments persuasive for the
same reasons discussed above in Rejection 1. Accordingly, we sustain
Rejections 2 and 3.
DECISION
For the above reasons, the rejections of claims 1, 2, and 5-23 are
affirmed.
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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
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