Ex Parte Boons et al

Patent Trial and Appeal BoardAug 29, 2018

14102962 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/102,962 12/11/2013 14322 7590 09/07/2018 Michael E. Carmen, Esq. RYAN, MASON & LEWIS, LLP 48 South Service Road Suite 100 Melville, NY 11747 FIRST NAMED INVENTOR Cornelis Hendrikus Maria 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. T-6531(538-107 CON CON) CONFIRMATION NO. 6675 EXAMINER V ASISTH, VIS HAL V ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 09/07/2018 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 bmg@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORNELIS HENDRIKUS MARIA BOONS, MARCEL VERLINDE, and DIRK JAN ELZO VROLIJK Appeal2017-010815 Application 14/102,962 Technology Center 1700 Before MICHAEL P. COLAIANNI, RAEL YNN P. GUEST, and GEORGE C. BEST, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal, under 35 U.S.C. Â§ 134(a), the Examiner's Final Rejection of claims 1-3, 5, 8-11, 13-16, 18-24, and 29-33, which constitute all the claims pending in this application. Claims 4, 6, 7, 12, 17, 25-28 have been cancelled. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). We AFFIRM. Appellants' invention is directed to lubricant oil compositions suitable for use in two-stroke diesel engines (Spec. ,r 1 ). According to the Appeal2017-010815 Application 14/102,962 Specification, these lubricant oil compositions may be used to lubricate the power cylinders in diesel engines burning fuels having conventional or reduced sulfur levels. Id. CLAIMED SUBJECT MATTER Claim 1 is illustrative: 1. A lubricating oil composition comprising an admixture of: (a) a major amount of an oil of lubricating viscosity; (b) a high-overbased calcium sulfonate detergent which is the only high-overbased detergent; ( c) one or more foam inhibitors; and ( d) about 2 wt. % to about 25 wt. % of one or more non- overbased or low overbased oil-soluble surfactant materials to provide enhanced corrosive wear control, wherein the one or more oil-soluble surfactant materials is either a non-overbased sulfonate surfactant material or a low-overbased sulfonate surfactant material; wherein the lubricating oil composition is a marine cross- head two-stroke diesel cylinder lubricating oil composition having a total base number (TBN) of about 5 to about 100, and further wherein the marine cross-head two-stroke diesel cylinder lubricating oil composition does not include a phenol. Appeal Br. 14 (Claims App'x) (emphasis added). THE REJECTION Appellants appeal the following rejection: 1. Claims 1-3, 5, 8-11, 13-16, 18-24, and 29-33 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Chambard et al. (US 2005/0153847 Al, published July 14, 2005, "Chambard '847") in 2 Appeal2017-010815 Application 14/102,962 view of Chambard et al. (US 2006/0116298 Al, published June 1, 2006, "Chambard '298"). Appellants' arguments focus on independent claims 1 and 22 (Appeal Br. 5-12; Reply Br. 1-8). We select claim 1 as representative. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Accordingly, claims 2, 3, 5, 8-11, 13-16, 18-21, 23, 24, and 29-33 will stand or fall with each of their respective independent claims. FINDINGS OF FACT & ANALYSIS The Examiner's findings and conclusions are located on pages 3 to 7 of the Answer. We adopt the Examiner's findings and well-reasoned conclusions as our own. We add the following analysis primarily for emphasis. According to the Examiner, Chambard '84 7 teaches a lubricating oil composition comprising several detergents with varying degrees of overbasing (Ans. 4). We note that the Specification provides that a "low overbased molecule has a TBN of above O but below about 60," whereas a "highly overbased molecule has a TBN of about 60 to as high as above 500" (Spec. if 26). The Examiner finds, inter alia, that Chambard '84 7 discloses that one of the detergents in a lubricating oil composition may be "at least 6 wt[.]% of an additional calcium sulfonate detergent, which can be considered a surfactant with a TBN of less than 50 ... meeting the limitations of component (d) of claim I" (Ans. 4 (citing Chambard '847,I 28)). The Examiner finds that Chambard '84 7 teaches all of the elements of the lubricating oil composition recited in claim 1, with the exception that it 3 Appeal2017-010815 Application 14/102,962 "does not explicitly disclose a formulation having both a high overbased calcium sulfonate detergent and a low-overbased sulfonate detergent as required by claim 1" (Ans. 4 (emphasis added)). The Examiner finds that Chambard '298 discloses a lubricating oil composition, which, in the absence of phenol compounds, includes additives of "up to 30wt % of a detergent such as a complex/hybrid detergent or an overbased calcium sulfonate detergent having a TBN of at least 200 []as recited in component (b) of claim 1" (Ans. 4 ( emphasis added)). The Examiner concludes that it would have been obvious to "to use the detergents of Chambard '298 in the composition of Chambard '847 as it is a simple substitution of one known element for another in order to obtain predictable results which include enhanced detergency properties" (Ans. 4-- 5). According to the Examiner, Chambard '298 is specifically relied upon "because of its disclosure of high overbased calcium sulfonate detergents[,] which are shown to be equivalent in the compositions thereof as the complex hybrid type detergents disclosed in Chambard '847." Id. at 5. Appellants first contend that "the skilled artisan would not have considered the calcium sulfonate detergents of Chambard [ ']298 to be equivalents to the complex hybrid type detergents disclosed in Chambard [']847" (Appeal Br. 7; see also Reply Br. 2). Appellants further contend that Chambard '298's Example 1 shows that when adding an oil-soluble or oil-dispersible molybdenum compound to a lubricating oil composition containing a phenate/sulfonate complex detergent such as the one disclosed in Cham bard [ '] 84 7, better wear protection is achieved as compared to the lubricating oil compositions of Comparative Examples 1-3[,] which contain the phenate/sulfonate complex 4 Appeal2017-010815 Application 14/102,962 detergent and no oil-soluble or oil-dispersible molybdenum compound. Appeal Br. 10; see also Reply Br. 5. Thus, according to Appellants, Chambard '298 "makes no showing that high overbased calcium sulfonate detergents are equivalent to the complex hybrid type detergents disclosed in Chambard [']847 in the compositions thereof' (Appeal Br. 10; see also Reply Br. 5). Appellants' arguments are not persuasive. We agree with the Examiner that Chambard '298 discloses use of a high-overbased calcium sulfonate or hybrid complex detergents as suitable detergents in a lubricating oil composition (Chambard '298 ,r,r 78-81, 87 ( disclosing "overbased ... metal sulfonates" in which "preferably the metal is calcium" as a suitable detergent and the "hybrid complex detergent" as "[a]lso suitable.")). We, furthermore, note that Chambard '847's "complex/hybrid detergent" (Chambard '847 ,r 24) and Chambard '298's "hybrid complex detergent" (Chambard '298 ,r 81) refer to the same detergents. 1 Chambard '298, therefore, would have reasonably provided the ordinary skilled artisan a teaching or suggestion that a high-overbased calcium sulfonate detergent, which is the only high-overbased detergent, may be added to a lubricating oil composition in the absence of Chambard '847's "complex/hybrid detergent" (Chambard '847 ,r 24). Thus, Appellants have not identified reversible error in the Examiner's position that including the high-overbased calcium sulfonate detergent of Chambard '298 in the complex hybrid type detergent disclosed 1 Both Chambard '847 (i-f 25) and Chambard '298 (i-f 81) refer to WO 97/46643, WO 97/46644, WO 97/46646, and WO 97/9746647 as providing examples of hybrid complex detergents. 5 Appeal2017-010815 Application 14/102,962 in Chambard '84 7 would have been a simple substitution of one known element for another in order to obtain predictable results, which include enhanced detergency properties. Appellants argue that Chambard '84 7 is distinguished because "the primary goal of Chambard [']847 was to use more than 230 ppm zinc ... together with the complex hybrid type detergents" in order to provide increased wear protection (Appeal Br. 7; see also Reply Br. 2-3). Appellants further argue that the examples of U.S. Patent No. 4,842,755 ("the '755 patent"), as discussed in Chambard '847, establish that a high- overbased calcium sulfonate detergent is not equivalent to a high-overbased complex hybrid type detergent because the former provided less wear protection than the latter when zinc amounts were increased to greater than 230 ppm (Appeal Br. 8; see also Reply Br. 3--4; 6-7). Based on this discussion in Chambard '847 regarding the '755 patent, Appellants conclude that if the high overbased calcium sulfonate detergent was used in the Chambard '84 7 invention, "the lubricating oil composition disclosed therein would not perform as Chambard [']847 intended" (Appeal Br. 9). We, however, agree with the Examiner that Chambard '847's discussion of the '755 patent is focused on varying the amount of zinc in the composition (Ans. 6). Thus, Appellants' arguments fail because they are directed to limitations not recited in claim 1, which is silent regarding the presence of zinc. To the extent that Appellants are separately arguing the patentability of dependent claims 29-32, which require that the lubricating oil composition is free of zinc dithiophosphate, or zinc dialkyldithiophosphate in particular, we are similarly unpersuaded. As the Examiner found, Chambard '84 7 does not teach that these zinc-containing 6 Appeal2017-010815 Application 14/102,962 antiwear additives are the only such zinc-containing antiwear additives that can be used in the compositions therein. Id. Appellants argue that Chambard '84 7 must "necessarily include a phenol" because "the complex hybrid type detergents include phenate surfactant therein" (Appeal Br. 10-11). According to Appellants, Chambard '84 7 has "has no appreciation that the marine diesel cylinder lubricant disclosed therein excludes a phenol as Appellants' claim." Id. at 12. Appellants' arguments are not persuasive because "[i]t is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). In this instance, Chambard '84 7 does not disclose that phenol compounds are required in the described hybrid complex detergent. For example, Chambard '847 expressly discloses that "[t]he detergent includes at least two swfactants, preferably at least phenate and sulphonate" (Chambard '847 ,r 24 ( emphasis added)). Chambard '84 7 further discloses that "the detergent preferably also includes a salicylate surfactant" and "may also include other surfactants such as ... an oil-soluble carboxylate." Id. Moreover, Chambard '84 7 discloses that calcium is the preferred metal for the surfactant. Id. Thus, we agree with the Examiner that Chambard '847 describes phenate as one option for a surfactant, but that sulfonate and salicylate are also possible options, in which case there would be no phenolic compounds in the hybrid complex detergent (see Ans. 7). Even assuming that Chambard '84 7 requires a phenate surfactant in the complex hybrid type detergent disclosed therein, Appellants' arguments do not address the Examiner's proposed modification. As the Examiner concluded, it would have been obvious to use Chambard '298's high 7 Appeal2017-010815 Application 14/102,962 overbased calcium sulfonate detergent in Chambard '84 7 's lubricating oil composition because it is a simple substitution of Chambard '298 's known high overbased calcium sulfonate detergent for Chambard '84 7 's hybrid complex detergent in order to obtain predictable results which include enhanced detergency properties (Ans. 4--5). We note that Chambard '298 does not require phenate surfactants (Chambard '298 ,r,r 79, 80). Therefore, the Examiner's proposed modification would have excluded any phenol compounds even if such compounds were present in the substituted hybrid complex detergent of Chambard '84 7. Thus, based on this record, we sustain this rejection. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). ORDER AFFIRMED 8