Ex Parte Farng et al

Patent Trial and Appeal BoardApr 30, 2013

10893599 (P.T.A.B. Apr. 30, 2013)

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. 10/893,599 07/16/2004 L. Oscar Farng JJD-0416 4078 7590 05/01/2013 ExxonMobil Research and Engineering Company P.O. Box 900 Annandale, NJ 08801-0900 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 05/01/2013 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 L. OSCAR FARNG, ANDREW JACKSON, WILLIE A. GIVENS JR., DOUGLAS E. DECKMAN, and WILLIAM H. BUCK ____________ Appeal 2012-003507 Application 10/893,599 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003507 Application 10/893,599 2 Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of claims 1, 3-6, and 8-12 as unpatentable over Nakazato (US 6,569,818 B2, issued May 27, 2003) ) and as unpatentable over Robson (US 7,026,273 B2, issued Apr. 11, 2006) in combination with Gatto (US RE38,929 E, reissued Jan. 3, 2006). We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants claim a method of lubricating an engine with a lubricating composition free of zinc and phosphorus-containing additives comprising a base oil and an additive system comprising a borated ashless dispersant, an ashless aminic antioxidant and a trinuclear molybdenum compound with the proviso that the composition have a minimum of 120 ppm boron and minimum of 80 ppm molybdenum and a B:Mo:N ratio in the range of about 3:5:7 to about 5:1:18 (independent claim 1; see also independent claim 6). Appellants also claim the lubricating oil composition itself (independent claim 12). Representative claim 1 reads as follows: 1. In the method of lubricating an engine with a lubricating composition, the improvement wherein the engine is lubricated with a lubricating oil composition having less than about 2000 ppm sulfur and free of zinc and phosphorus- containing additives, the lubricating composition comprising: (I) a major amount of a base oil of lubricating viscosity; and (II) an effective amount of an additive system comprising: (i) a metal detergent or mixture of metal detergents; Appeal 2012-003507 Application 10/893,599 3 (ii) an ashless dispersant or mixture of dispersants, at least one of which is a borated ashless dispersant; (iii) an ashless aminic antioxidant or mixture of antioxidants containing at least an aminic antioxidant; and (iv) an oil soluble, phosphorous free, trinuclear molybdenum compound having the formula Mo3 SkLnQz where the L are independently selected ligands having organo groups with a sufficient number of carbon atoms to render the compound soluble or dispersible in the oil, n is from 1 to 4, k varies from 4 to 7, Q is selected from neutral electron-donating compounds and z ranges from 0 to 5 including non- stoichiometric values, the trinuclear molybdenum compound being present in an amount of from about 0.05 wt% to about 1.5 wt% based on the total weight of the composition; (III) with the proviso that the composition have a minimum of 120 ppm boron and minimum of 80 ppm molybdenum and a B:Mo:N ratio in the range of about 3:5:7 to about 5:1:18. (Claims Appâ€™x at App. Br. 15). The Rejection based on Nakazato Appellants argue that "Nakazato does not disclose use of a trinuclear moly compound [as required by all claims]" (App. Br. 11) and that "[n]one of the moly compounds exemplified in Nakazato are trinuclear moly compounds (cf., Column 7, lines 22 to 28)" (id.). The Examiner finds that Nakazato discloses oxymolybdenum dithiocarbamate compounds such as oxymolybdenum dithiocarbamate sulfide (Ans. 6), concedes that Nakazato does not characterize these molybdenum compounds as trinuclear (id.), but states that "the structural formula of such oxymolybdenum dithiocarbamate compounds are generally trinuclear (meaning three molybdenum atoms in the molecule)" (id.). Appeal 2012-003507 Application 10/893,599 4 Significantly, the Examiner provides no evidence in support of this statement. Appellants argue that the Examiner's statement is incorrect and that "[o]xymolybdenum compounds typically are dinuclear[;] [s]ee, for example, U.S. 5,916,851" (Reply Br. 2). An inspection of the patent cited by Appellants quickly reveals that oxymolybdenum dithiocarbamate sulfide has a molecular structure with only two molybdenum atoms (see, e.g., Abst.). Therefore, the patent evinces that Nakazato's oxymolybdenum dithiocarbamate sulfide is dinuclear as argued by Appellants rather than trinuclear as stated by the Examiner. Because the Examiner provides no evidence supporting the statement that Nakazato's oxymolybdenum dithiocarbamate compounds are trinuclear whereas Appellants provide evidence showing this unsupported statement to be erroneous, the rejection based on Nakazato will not be sustained. The Rejection based on Robson and Gatto We will sustain this rejection for the reasons expressed in the Answer and below. Appellants imply that the appealed claims distinguish over Robson by requiring the claimed composition to be free of phosphorus-containing additives (App. Br. 9). However, as correctly found by the Examiner and not disputed by Appellants, Robson expressly teaches that the amount of phosphorus in Robson's lubricating oil composition is preferably zero (Ans. 4 citing Robson col.4, ll. 7-32). Appellants also imply that the claims distinguish over Robson by requiring a specific ratio range of B:Mo:N (App. Br. 9). For the reasons Appeal 2012-003507 Application 10/893,599 5 detailed in the Answer, we agree with the Examiner that it would have been prima facie obvious for one with ordinary skill in this art to provide Robson's composition with optimum amounts of additives containing elements such as boron and molybdenum particularly since Robson teaches that appropriate amounts of boron and molybdenum containing additives provide improved friction-reducing and anti-oxidancy performance (Ans. para. bridging 7-8 citing Robson col. 5, ll. 36-40). Because these performance desiderata of Robson correspond to those of Appellants (see, e.g., Spec. 1), a reasonable basis exists for believing that appropriate amounts of such additives in accordance with the teachings of Robson would yield ratios within Appellants' claimed range. Appellants disagree with the Examiner's conclusion (see Ans. 5) that it would have been prima facie obvious to provide Robson's composition with Gatto's aminic antioxidant. In particular, Appellants argue that "Gatto specifically states that the amine in his composition is to be used in combination with a molybdenum additive that does not contain sulfur (see, e.g., Column 2, lines 49 to 51)" (App. Br. para. bridging 9-10) whereas "Robson discloses use of a molybdenum dithiocarbonate [sic, dithiocarbamate] (a sulfur-containing compound)" (id.). It is Appellants' basic position that the Examiner's proposed combination of Robson and Gatto is improper because "Gatto specifically teaches away from adding anything 'sulfur-containing' in his composition" (id.). Appellants' argument is unpersuasive for a number of reasons. First, Gatto's column 2 teaching identified by Appellants relates to "an oil soluble molybdenum compound substantially free of active sulfur" (col. 2, ll. 49-50) rather than "a molybdenum additive that does not contain sulfur" as argued Appeal 2012-003507 Application 10/893,599 6 by Appellants (App. Br. para. bridging 9-10). For this reason, Appellants are incorrect in contending that "Gatto specifically teaches away from adding anything 'sulfur-containing' in his composition" (id.). With this clarification of Gatto's teaching in mind, we emphasize that Appellants do not argue much less provide evidence showing that Robson's molybdenum dithiocarbamate contains active sulfur and therefore fails to qualify as a molybdenum compound substantially free of active sulfur in accordance with the teaching of Gatto. Second, Gatto's aforementioned teaching appears to be a preference rather than a requirement as evinced by the Gatto disclosure that "[t]he molybdenum compound in this invention is preferably substantially free of phosphorus and substantially free of active sulfur" (sentence bridging cols. 8-9). Finally, Appellants state that "the data in Example 2 of their specification establishes the importance of the B:Mo:N ratio in providing an oil that achieves satisfactory engine performance" (App. Br. 10) and that "the Rule 132 Affidavit filed in the subject application . . . also substantiates the importance of the B:Mo:N ratio" (id.). (See also Reply Br. 2). Contrary to the implication raised by Appellants' statements, nonobviousness is not evinced by the claimed ratios being important but rather by any unexpected results produced by such ratios. Importantly, Appellants do not identify anything in their Specification or Rule 132 Affidavit which characterizes the results produced by the claimed ratios as unexpected by one with ordinary skill in this art. Moreover, the Specification and Affidavit data referred to by Appellants are not commensurate in scope with the appealed claims as correctly observed by the Examiner (Ans. 8). Appeal 2012-003507 Application 10/893,599 7 Appellants' additional arguments are persuasively rebutted in the Answer. We sustain the Â§ 103 rejection of all appealed claims as being unpatentable over Robson and Gatto. Conclusion The decision of the Examiner 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). AFFIRMED kmm