Ex Parte Hirano et al

Patent Trial and Appeal BoardMar 13, 2015

10430594 (P.T.A.B. Mar. 13, 2015)

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. 10/430,594 05/06/2003 Satoshi Hirano T-6150 3438 7590 03/13/2015 Steven G.K. Lee ChevronTexaco Corporation P.O. Box 6006 San Ramon, CA 94583-0806 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 03/13/2015 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 SATOSHI HIRANO, SHIGERU IWAMOTO, MORIKUNI NAKAZATO ____________ Appeal 2013-004447 Application 10/430,594 Technology Center 1700 ____________ Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134 from the Primary Examiner’s February 2, 2012 decision finally rejecting claims 1 and 3–20. 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 Appellants identify the Real Party-In-Interest as ChevronTexaco Japan Limited (Appeal Br. 4). 2 The Appeal Brief and the Examiner’s Answer only specifically identify claims 1 and 3–19 as being subject to the outstanding rejections (Appeal Br. 10; Ans. 5, 6). However, the January 12, 2012 Advisory Action (“Advisory Action”) indicates that claim 20—which was proposed to be added in the December 21, 2011 Amendment After Final Rejection—was entered by the Examiner as indicated in the Advisory Action, is listed in the Claims Appendix, and also was rejected. Appeal 2013-004447 Application 10/430,594 2 We affirm-in-part. CLAIMED SUBJECT MATTER Appellants’ invention is directed to a lubricating oil composition comprising six different components in specific amounts and ratios (Abstract). Claim 1is representative, and are reproduced below from the Claims Appendix of the Appeal Brief (key claim limitations in italics): 1. A motor-driven vehicle lubricating oil composition, comprising: a) a major amount of a base oil having a sulfur content of at most 0.2 wt.%; b) an ashless dispersant comprising an alkenyl- or alkyl- succinimide or a derivative thereof in an amount of 0.01 to 0.3 wt.% in terms of the nitrogen atom content; c) a metal-containing detergent that contains an organic acid metal salt, having a TBN of 10 to 350 mg KOH/g, and a sulfur content of at most 3.5 wt. %, in an amount of 0.1 to 1 wt.% in terms of a sulfated ash content with the proviso that the organic acid metal salt is incorporated into the oil composition in an amount of 0.2 to 7 wt.%; d) a zinc dialkyldithiophosphate in an amount of 0.01 to 0.06 wt.% in terms of a phosphorus content; e) a zinc dialkylaryldithiophosphate in an amount of 0.002 to 0.015 wt.% in terms of the phosphorus content; and f) an oxidation inhibitor selected from the group consisting of a phenol compound, an amine compound, and a molybdenum-containing compound in an amount of 0.01 to 5 wt.%, wherein: i) the ratio of the phosphorus content of the zinc dialkyldithiophosphate to the phosphorus content of the zinc dialkylaryldithiophosphate in the motor-driven vehicle lubricating oil composition is in the range of 10:1 to 2:1; and ii) the motor-driven vehicle lubricating oil composition has a sulfur content of 0.01 to Appeal 2013-004447 Application 10/430,594 3 0.5 wt. %, a phosphorus content of 0.01 to 0.1 wt. %, and a sulfated ash in the range of 0.1 to 1 wt.%. REJECTIONS (1) Claims 1 and 3–19 are rejected on the grounds of nonstatutory obviousness-type double patenting as unpatentable over claims 1–19 of Nakazato. 3 (2) Claims 1 and 3–19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over EP ʼ497 4 in combination with Nagamatsu. 5 (3) Claims 1 and 3–19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yagishita, 6 either alone or in combination with Nagamatsu. Appellants do not present any arguments with respect to the non- statutory obviousness-type double patenting rejection (see, Appeal Br. 10). Accordingly, we affirm Rejection (1), and confine our discussion to the obviousness rejections. DISCUSSION It is well established that in order to reject a claim in a patent application as obvious under 35 U.S.C. § 103(a), the Examiner must show a prima facie case of obviousness, including the presence of each element of the claim. In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a 3 Nakazato et al., U.S. Patent No. 6,569,818 B2, issued May 27, 2003. 4 Nakazato et al., EP 1 167 497 A2, published January 2, 2002. 5 Nagamatsu et al., U.S. Patent No. 6,551,965 B2, issued April 22, 2003. 6 Yagishita et al., U.S. Patent No. 6,569,819 B2, issued May 27, 2003. Appeal 2013-004447 Application 10/430,594 4 patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also, In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this instance, with regards to each rejection, the Examiner finds that (a) the primary references for each rejection (EP ʼ497 and Yagishita) disclose most of the elements of claim 1, and (b) neither EP ʼ497 nor Yagishita discloses the claimed ratio of the phosphorus content of zinc dialkyldithiophosphate to the phosphorus content of zinc dialkylaryldithiophosphate, as set forth in element (i) of claim 1 (Ans. 6, 7). To explain why this element would have been obvious over the cited art, the Examiner makes only the following finding: “it would have been obvious to the skilled artisan to have used both of these dithiophosphate compounds and to have varied the amounts of these two compounds” (Ans. 6, 7, italicization added, underlining in original). Thus, to support the obviousness of the claimed ratio of phosphorous content between the two zinc dithiophosphates (which must be in the range of 10:1 to 2:1), the Examiner relies on an assertion that “it would have been obvious . . . to have varied the amounts of these two compounds” (Ans. 6). No other explanation is provided, nor does the Examiner make any findings with regards to the specifically claimed ratios. As argued by Appellants (Appeal Br. 12, 16, 22) the Examiner has not explained why a person of skill in the art would have varied the relative amounts of the compounds to arrive at the claimed ratio. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In this Appeal 2013-004447 Application 10/430,594 5 instance, we conclude that the Examiner has not articulated reasoning with sufficient specificity to support a finding that the claimed ratio of the compounds at issue would have been obvious. Accordingly, we reverse both obviousness rejections. CONCLUSION We AFFIRM the rejection of claims 1 and 3–19 on the grounds of nonstatutory obviousness-type double patenting as unpatentable over claims 1–19 of Nakazato. We REVERSE the rejection of claims 1 and 3–19 under 35 U.S.C. § 103(a) over EP ʼ497 in view of Nagamatsu. We REVERSE the rejection of claims 1 and 3–19 under 35 U.S.C. § 103(a) over Yagishita in view of Nagamatsu. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART tc