Ex Parte Gray et alDownload PDFPatent Trial and Appeal BoardJan 30, 201712337036 (P.T.A.B. Jan. 30, 2017) Copy Citation 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. 12/337,036 12/17/2008 David B. Gray AFTON-1114US 2997 22186 7590 01/30/2017 MENDELSOHN DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 312 PHILADELPHIA, PA 19102 EXAMINER VASISTH, VIS HAL V ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 01/30/2017 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 DAVID B. GRAY, CHARLES A. PASSUT, and LEE D. SAATHOFF1 Appeal 2015-001593 Application 12/337,036 Technology Center 1700 Before JEFFREY T. SMITH, JEFFREY R. SNAY, and BRIAN D. RANGE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 5, 8—11, 14, 17, 18, and 20—31. An oral hearing was held on January 6, 2017.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appeal Brief, the Real Party in Interest is Afton Chemical Corporation. (Br. 2). 2 A written transcript of the oral hearing will be entered into the record when the transcript is made available. Appeal 2015-001593 Application 12/337,036 BACKGROUND Appellants’ invention “relates to lubricating compositions, additive packages, and methods for lubricating both a transmission and a diesel engine.” (Spec. 12). The lubricating compositions and additive packages are said to contain a base oil and an additive package comprising at least one calcium phenate (metal detergent), at least one zinc dialkylnaphthalene sulfonate (metal detergent), and at least one zinc dihydrocarbyl dithiophosphate (wear preventative). {Id. Tflf 31—34). The claimed lubricating compositions and additive packages are said to be TO-4 compliant having an FZG scuffing load stage score of 12. (Independent Claims 1, 10, and 31). The Specification describes “TO-4” as the new set of transmission and drive train fluid requirements introduced by Caterpillar Corporation. {Id. 14). “All TO-4 oils must comply with a number of fluid properties including certain wear, viscometric and friction conditions as set out in the TO-4 specification.” {Id.) Claim 1 is reproduced below from the Claims Appendix to the principal Brief: 1. A lubricating composition comprising: a) a base oil; b) at least one calcium phenate; c) at least one zinc dialkylnaphthalene sulfonate; and d) at least one zinc dihydrocarbyl dithiophosphate compound wherein the lubricating composition is TO-4 compliant having an FZG scuffing load stage score of 12. 2 Appeal 2015-001593 Application 12/337,036 The Examiner maintains, and Appellants appeal, the following rejections: Claims 1, 2, 5, 8—11, 14, 17, 18, and 20—31 under 35 U.S.C. § 103(a) as unpatentable over as unpatentable over Tersigni et al. (US 2002/0032129 Al, March 14, 2002) (“Tersigni”). OPINION3 Appellants present arguments specifically directed to the independent claims 1, 10, and 31. (Br. 10-15). Therefore, the dependent claims will stand or fall with their parent independent claims.4 We sustain the Examiner’s rejection for the reasons expressed in the Final Action, the Answer, and below. We refer to the Examiner’s Final Action for a complete statement of the rejection. (Final Act. 4). Appellants argue Tersigni fails to suggest a lubricant or additive package for a lubricant which includes the combination: (1) at least one metal phenate, (2) at least one zinc dialkylnaphthalene sulfonate, and (3) at least one zinc dihydrocarbyl dithiophosphate compound as required by the claimed invention. (App. Br 10-11). Appellants further argue “[ojnly through the extensive use of impermissible hindsight could one of ordinary skill in the art arrive at the presently claimed subject matter, using only the Tersigni reference.” (Mat 11). 3 This Decision incorporates our Decision from prior appeal 2012— 007173, mailed July 19, 2013. 4 We limit our discussion to independent claim 1 as representative of the subject matter on appeal. 3 Appeal 2015-001593 Application 12/337,036 Appellants’ arguments are not persuasive of reversible error. Appellants acknowledge that Tersigni discloses a lubricant or additive package for a lubricant which includes calcium phenate, zinc dialkylnaphthalene sulfonate, and zinc dihydrocarbyl dithiophosphate compound. {Id. at 10-11). Tersigni discloses a transmission fluid composition (a lubricating5 composition for transmission) comprising a major amount of a base oil and a minor amount of an additive composition containing at least one zinc detergent, at least one phosphorus-containing additive and optional additives, such as, for example, dispersants, friction modifiers, viscosity index improvers, alkali metal detergents, corrosion inhibitors, and phosphorus-containing anti-wear/extreme pressure additives. (Tersigni H 9, 27). Tersigni teaches that: The preferred zinc detergents for use in the present invention include zinc sulfonates. The zinc sulfonates suitable for use in the present invention include zinc dihydrocarbyl aromatic sulfonates such as zinc dialkylnaphthalene sulfonate. (Tersigni 113). Tersigni also teaches alkali metal detergents and/or alkaline-earth metal detergents —including calcium phenates— can be used together with the zinc detergents (Tersigni H 44-46). Tersigni further teaches considerations must be made regarding the effect on the amount of zinc and phosphate in the composition when including zinc dihydrocarbyl dithiophosphates in the invention. (Tersigni H 53, 57). 5 Tersigni identifies its transmission fluid composition as a lubricating composition for an automotive transmission. (Tersigni H 8, 58). 4 Appeal 2015-001593 Application 12/337,036 Given the teachings of Tersigni, one of ordinary skill in the art would have been led to a lubricant composition — including a base oil— and an additive package — not including a base oil— both comprising a specific set of additives to improve the lubricating performance of the base oil. Both the lubricant composition and an additive package comprise zinc dialkylnaphthalene sulfonate, an alkali metal detergent, such as calcium phenate, and zinc dihydrocarbyl dithiophosphates as required by the claimed invention. Given the teachings of Tersigni, one of ordinary skill in the art would have a reasonable expectation of successfully including these components as an additive concentrate or a package useful for forming a base oil containing-transmission fluid composition for lubricating a transmission, such as a continuously variable transmission. As to the requirement for the composition being TO-4 compliant having an FZG scuffing load stage score of 12 as required by the claims, Tersigni would have led one of ordinary skill in the art to formulate the claimed transmission lubricant having enhanced performance capabilities, including high steel-on-steel coefficients of friction, as indicated supra. Although Tersigni does not explicitly indicate its transmission lubricant having enhanced performance capabilities as having the TO-4 compliant properties (including an FZG scuffing load stage score of 12), we determine that such TO-4 properties would have naturally flowed from following Tersigni’s suggestion of forming the claimed transmission lubricant. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”); In re Papesch, 315 F.2d 381, 391 5 Appeal 2015-001593 Application 12/337,036 (CCPA 1963) (“a compound and all of its properties are inseparable”); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicants’] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”) In any event, Tersigni recognizes the importance of using appropriate amounts of its specific detergents and other appropriate additives to formulate a transmission lubricant having desired performance properties, such as desired friction, viscosity, and/or shear stability properties. (Tersigni || 63 and 64). Tersigni teaches that transmission lubricants are required by the automotive industry to meet numerous performance criteria, including a desirable increase in the steel- on-steel coefficient of friction, cleanliness, TBN, rust inhibition as determined by ASTM D-130, antioxidancy, and demulsibility. (Id. 1 68). Thus, we determine that one of ordinary skill in the art would have been led to employ appropriate amounts of the ingredients suggested by Tersigni to formulate a transmission lubricant having optimum performance properties acceptable to the automotive industry, including the known TO-4 compliant performance criteria set forth by Caterpillar Corporation. Secondary Considerations When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of prima facie obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). 6 Appeal 2015-001593 Application 12/337,036 Appellants have not demonstrated the declaration exhibits unexpected results (synergistic effect) that are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”); see also In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, “the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). We have considered the Bender Declaration6, but do not find it persuasive of establishing patentability of the appealed subject matter. The data presented in the declaration is not specific to exemplary embodiments. The declaration presents one example which is purported to be Appellants’ inventive fluid in Table 1 which describes the inventive composition as 6 Declaration of Jonathan W. Bender, dated August 27, 2013. 7 Appeal 2015-001593 Application 12/337,036 including “Overbased metal phenate,” “Metal dialkynaphthalene sulfonate” and “Zinc dihydrocarbyl dithiophosphate.” (Bender Decl. 1 8; Br. 12—13; Table 1) (emphasis added). The declaration presents one example that is purported to be representative of Tersigni as including “Overbased metal sulfonate,” “Zinc dialkynaphthalene sulfonate” and “Zinc dihydrocarbyl dithiophosphate.” (Bender Decl. 19; Br. 13; Table 2). Dr. Bender has not explained how the single example of Table 1 is representative of all the lubricant and added this package for lubricants encompassed by the claimed invention. Dr. Bender has not explained how this data of the declaration is representative of the claimed invention and Tersigni. The composition purported to be representative of the claimed invention is not specific to the claimed invention and the invention of Tersigni. More specifically the declaration describes the example representative of the claimed invention and Tersigni as comprising “Overbased metal phenate” which is not specific to “calcium phenate” required by the claimed invention and does not describe a phenate as described in Tersigni. To the extent that passing the test for CAT TO-4 and FZG Scuffing may be an improvement over other prior art compositions, a mere improvement is not sufficient to establish that the results would have been “unexpected.” See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of “unexpected results” to be probative evidence of non obviousness, the Applicant must establish that the difference between the results obtained through the claimed invention and those of the prior art would not have been expected by one skilled in the art at the time of invention). Moreover the declarant has not explained which of these 8 Appeal 2015-001593 Application 12/337,036 examples is representative of the baseline for determining the alleged improvement. For the foregoing reasons and those provided by the Examiner, based on the totality of the record, we determine that the preponderance of evidence weighs in favor of obviousness, giving due weight to Appellants’ arguments and evidence. Accordingly, the Examiner’s rejections is affirmed. ORDER The rejections of claims 1, 2, 5, 8—11, 14, 17, 18, and 20—31 under 35 U.S.C. § 103(a) is affirmed. TIME PERIOD 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). AFFIRMED 9 Copy with citationCopy as parenthetical citation