Ex Parte Gray et al

Patent Trial and Appeal Board

Jan 30, 2017

12337036 (P.T.A.B. Jan. 30, 2017)

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.
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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).
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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
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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).
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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.
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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
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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
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