Ex Parte Cartwright

Patent Trial and Appeal BoardOct 29, 2012

11590546 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/590,546 10/31/2006 Stanley James Cartwright JJA-0615 6468 7590 10/29/2012 ExxonMobil Research and Engineering Company P. O. Box 900 Annandale, NJ 08801-0900 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 10/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STANLEY JAMES CARTWRIGHT __________ Appeal 2011-004333 Application 11/590,546 Technology Center 1700 ____________ Before CHUNG K. PAK, TERRY J. OWENS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004333 Application 11/590,546 2 Appellant appeals under 35 U.S.C. § 134 from the final rejection of claims 1-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to a method for enhancing the deposit control capacity of lubricating oils used in high load condition engines (Spec. para. 2). Claim 1 is illustrative: 1. A method for enhancing the deposit resistance of lubricating oil composition used under sustained high load conditions comprising adding to a base stock oil a combination of additives comprising a minor amount of detergent comprising as essential ingredient one or more neutral or low TBN and/or mixture of neutral/low TBN and overbased/high TBN alkali and/or alkaline earth metal salts of alkylsalicylate and/or alkyl phenate sufficient to achieve a sulfated ash content for the final lubricating oil composition of about 0.1 mass % to about 2.0 mass % and a minor amount of an organomolybdenum complex sufficient to provide from about 25 wppm to about 2000 wppm elemental molybdenum in the final lubricating oil composition. Appellant appeals the following rejections: 1. Claims 1 and 5-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Robson (US 2003/0148895 A1 published Aug. 7, 2003). 2. Claims 1-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Strickland (US 2003/0004070 A1 published Jan. 2, 2003). Appeal 2011-004333 Application 11/590,546 3 With regard to rejection (1), Appellant argues claims 1 and 7 (App. Br. 11-15). With regard to rejection (2), Appellant argues claim 1 only (id. at 15-21). ISSUES 1. Did the Examiner reversibly err in concluding that the teachings of Robson or Strickland would have rendered prima facie obvious the subject matter of claim 1 and that Robson’s teachings would have rendered obvious the subject matter of claim 7? We decide this issue in the negative. 2. Did the Examiner reversibly err in finding that the Appellant’s evidence of unexpected results was not probative of nonobviousness because the evidence is not commensurate in scope with the claimed subject matter? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES Issue 1 Appellant argues that Robson or Strickland does not teach or suggest the criticality of including the combination of a neutral or low TBN (Total Base Number) salicylate or phenate with a molybdenum compound in order to achieve enhanced deposit resistance (App. Br. 12, 16). Appellant contends that Robson’s teaching of a broad TBN range from 15 or 60 to 600 or Strickland’s teachings of a broad TBN range from 20 to 245 fails to teach or suggest that it is essential that a low TBN salicylate or phenate detergent be present in the composition (id. at 13 & 17). Appellant argues that Strickland exemplifies an embodiment having a TBN salicylate or phenate of 168, which is not a neutral/low TBN salicylate or phenate as required by Appeal 2011-004333 Application 11/590,546 4 the claims1 (id. at 17). Appellant argues that the subject matter of claim 7 that recites the neutral/low TBN detergent has a TBN of about 120 mg KOH/g or less and the overbased/high TBN detergent has a TBN of about 190 mg KOH/g or more distinguishes over Robson (id. at 14). The Examiner finds that Robson or Strickland teaches detergents having TBN ranges that overlap with Appellant’s disclosed range of less than 150 or less mg KOH/g or the TBN ranges recited in claim 7, which establishes a prima facie case of obviousness (Ans. 3-8). The Examiner finds that Robson or Strickland teaches that molybdenum compounds may be added to the oil compositions, which would have rendered obvious the claim requirement of molybdenum compounds (id.). The preponderance of the evidence favors the Examiner’s obviousness conclusion. Appellant’s argument that Robson or Strickland does not teach or exemplify the importance of combining a neutral/low TBN detergent and a molybdenum compound misses the fact that the rejection is based on obviousness. As the Examiner finds (id.), Robson and Strickland both teach methods of making oil compositions that include adding detergents with TBN ranges that overlap those required by claims 1 and 7, which establishes prima facie obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Additionally, the Examiner properly finds that Robson or Strickland teaches that the method includes adding a molybdenum compound as part of the oil composition (Ans. 3-6). 1 Appellant argues that the Specification defines “neutral/low TBN” to be “about 150 or less mg KOH/g, preferably about 120 or less mg KOH/g, most preferably about 100 or less mg KOH/g” (Spec. para. [0037], App. Br. 17). Appeal 2011-004333 Application 11/590,546 5 Therefore, on this record, the Examiner has established a prima facie case of obviousness. We now consider the prima facie case anew in light of Appellant’s evidence of nonobviousness (i.e., unexpected results). Issue 2: Unexpected Results Appellant contends that the data contained in Table 3 of the Specification and the evidence in the Declaration of S. James Cartwright (hereinafter the Cartwright Declaration) establishes that the deposit resistance of the oil composition obtained by the claimed method is unexpectedly enhanced when a neutral/low TBN detergent and a molybdenum compound are added to the composition (App. Br. 12-13; 18- 21). However, the Examiner finds that the data contained in Table 3 is not commensurate in scope with the claimed invention (Ans. 7-9). The data in the Specification uses two neutral or low TBN detergents (i.e., calcium alkyl salicylate or calcium phenate) (Table 3, Spec. 44). The claims are not limited to solely these two particular neutral/low TBN detergents. Rather, claim 1 recites that the neutral/low TBN detergent may be “alkali and/or alkaline earth metal salts of alkylsalicylate and/or alkyl phenate”. Appellant’s evidence is not commensurate in scope with the entire claimed range of neutral/low TBN detergents and Appellant provides no reasonable basis to support the conclusion that other compounds falling within the claims will behave in the same manner as the exemplified embodiments. In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Regarding Appellant’s evidence in the Cartwright Declaration, the Examiner finds that the data in the table on page 4 of the Cartwright Appeal 2011-004333 Application 11/590,546 6 Declaration is inconclusive with respect to showing criticality or unexpected results with using a molybdenum compound as part of the oil composition (Ans. 9). The Examiner properly finds that when Comparative Oil A of the Cartwright Declaration with no molybdenum compounds is compared to Reference Oil 1 and Comparative Oil 2 contained in Appellant’s Table 1 on page 41 of the Specification, an improvement in deposit resistance with Comparative Oil A is shown despite not having any molybdenum compounds. Reference Oil 1 and Comparative Oil 2, like Comparative Oil 1 used in the Cartwright Declaration and Table 1 of the Specification, do not contain any molybdenum compounds or low TBN detergent (Spec. 41 Table 1). Appellant does not respond to the Examiner’s analysis of the proffered data. We add that that the Cartwright Declaration data, like the Specification data in Table 3, provides only two examples of neutral/low TBN detergents (i.e., calcium alkyl salicylate or calcium phenate), but the claims are open to including any neutral/low TBN detergent having alkali or alkaline earth metal salts of alkylsalicylate and/or alkyl phenate (claim 1). Declarant Cartwright does not provide a reasonable basis that supports the conclusion that other compounds falling within the claims will behave in the same manner. Kao, 639 F.3d at 1068. In other words, the Cartwright Declaration evidence is not commensurate in scope with the claimed invention. On this record, after considering the prima facie case anew in light Appellant’s evidence of nonobviousness, we find that the preponderance of Appeal 2011-004333 Application 11/590,546 7 the evidence favors the Examiner’s obviousness conclusion. We affirm the Examiner’s § 103 rejections over Robson or Strickland. 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. § 1.136. ORDER AFFIRMED bar