Ex Parte Iyer et alDownload PDFPatent Trial and Appeal BoardNov 28, 201412784696 (P.T.A.B. Nov. 28, 2014) Copy Citation 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. 12/784,696 05/21/2010 Ramnath N. Iyer 62026.D1 9352 22186 7590 11/28/2014 MENDELSOHN, DRUCKER, & DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 312 PHILADELPHIA, PA 19102 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 11/28/2014 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 RAMNATH N. IYER and SAMUEL H. TERSIGNI1 ____________ Appeal 2013-000190 Application 12/784,696 Technology Center 1700 ____________ Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal2 under 35 U.S.C. § 134 from the decision of the Primary Examiner finally rejecting claims 1 through 15 and 32 through 37, which are all of the claims pending in the above identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND This is a second appeal involving subject matter relating to “[c]ompositions…useful in a variety of lubricating and power transmitting 1 According to Appellants, the Real Party in Interest is Afton Chemical Corporation. (Appeal Brief filed February 9, 2012 (“App. Br.”) at 2.) 2 Appellants seek review of the Examiner’s final rejection of claims 1 through 15 and 32 through 37. (App. Br. 9.) Appeal 2013-000190 Application 12/784,696 2 applications, for example, in automatic transmissions.” (Spec. 1, ¶ [0002].) This appealed subject matter includes: [A] method for increasing steel-on-steel friction and stabilizing steel-on-paper friction….[comprising] lubricating a transmission with a lubricating composition comprising a major amount of a base oil and additive composition comprising (a) at least one first phosphorus- and boron-containing dispersant in amount of about 20 wt% or more in the additive composition; (b) at least one second boron-containing dispersant, free of phosphorus; and (c) at least one metal-containing detergent. [(Spec. 2, ¶ [0006].)] The desired steel-on-steel friction and steel-on-paper friction refer to the friction necessary for transmission torque, without shudder problems. (Spec. 3–4, ¶¶ [0028] and [0029].) This appealed subject matter, unlike the earlier related appealed subject matter considered in the decision dated March 8, 20133 on Appeal No. 2011- 005626 (Application 11/838,985), is directed to a method of using a lubricating composition for lubricating a transmission, rather than to a transmission lubricating composition. Nonetheless, the issues raised by Appellants in this appeal are essentially identical to those raised in the earlier appeal. Details of this appeal subject matter are recited in illustrative claims 1, 32, and 33 reproduced below from the Claims Appendix: 1. A method for increasing steel-on-steel friction and stabilizing steel-on-paper friction comprising: providing a lubricating composition comprising a major amount of a base oil and an additive composition comprising: 3 This decision is hereinafter referred to as the “earlier Decision”. Appeal 2013-000190 Application 12/784,696 3 (a) at least one first phosphorus- and boron-containing dispersant in an amount of about 20 wt% or more in the additive composition; (b) at least one second boron-containing dispersant, free of phosphorus; and (c) at least one metal-containing detergent, wherein the total amount of metal in the lubricating composition is at least about 549 ppm; and lubricating a transmission with the lubricating composition. 32. A method of increasing steel-on-steel friction comprising: providing a transmission with a lubricating composition comprising a major amount of a base oil and an additive composition comprising: (a) at least one first phosphorus- and boron-containing dispersant in an amount of about 2.0 wt% or more in the fluid; (b) at least one second boron-containing dispersant, free of phosphorus; and (c) at least one metal-containing detergent, wherein the total amount of metal in the lubricating composition is at least about 549 ppm; and lubricating a transmission with the lubricating composition. 33. A method of improving anti-shudder comprising: providing a transmission having shudder with a lubricating composition comprising a major amount of a base oil and an additive composition comprising: Appeal 2013-000190 Application 12/784,696 4 (a) at least one first phosphorus- and boron-containing dispersant in an amount of about 2.0 wt% or more in the fluid; (b) at least one second boron-containing dispersant, free of phosphorus; and (c) at least one metal-containing detergent, wherein the total amount of metal in the lubricating composition is at least about 549 ppm; and lubricating a transmission with the lubricating composition. (App. Br. 14-16 (emphasis added).) The Examiner relies on the following prior art references as evidence in rejecting the appealed claims (Ans. 4): Chrisope et al. (“Chrisope”) 5,089,156 Feb. 18, 1992 Srinivasan et al. (“Srinivasan ’236”) 5,578,236 Nov. 26, 1996 Srinivasan et al. (“Srinivasan ’441”) 2002/0151441 A1 Oct. 17, 2002 Robson et al. (“Robson”) 2003/0148895 A1 Aug. 7, 2003 The Examiner maintains, and Appellants appeal, the following grounds of rejection: 1. Claims 1 through 15 and 32 through 37 under 35 U.S.C.§ 103(a) as unpatentable over the combined disclosures of Srinivasan ’441, Chrisope, and Robson; and 2. Claims 1, 12, 14, 15, and 32 through 37 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Srinivasan ’236 and Srinivasan ’441. (Ans. 4–9 and App. Br. 9.) DISCUSSION Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence supports the Examiner’s Appeal 2013-000190 Application 12/784,696 5 determination that one of ordinary skill in the art, armed with the knowledge reflected in the collective teachings of Srinivasan ’441, Chrisope, and Robson or the collective teachings of Srinivasan ’236 and Srinivasan ’441, would have been led to the claimed subject matter within the meaning of 35 U.S.C. § 103(a) for the reasons set forth in the Answer and the earlier Decision. We add the following for emphasis and completeness. As is apparent from the record, Appellants do not dispute the Examiner’s finding that the applied prior art references would have suggested employing a lubricating fluid comprising a major amount of a base oil and an additive composition containing at least one phosphorus- and boron-containing dispersant in an amount of about 20 wt% or more in the additive composition or about 2.0 wt% or more in the fluid and at least one metal-containing detergent, with the total amount of metal in the lubricating fluid being at least about 549 ppm for lubricating a transmission. (Compare FR 4–9 and Ans. 4-9 with App. Br. 10–13; see also, e.g., Srinivasan ’441, ¶¶ [0020], [0032], [0035]–[0037], [0044]–[0046], [0058], [0060], [0063] and [0064], Chrisope, col. 1, ll. 50-64, col. 10, ll. 4–8, and col. 12, 5–10, and Srinivasan ’236, col. 1, ll. 8–10, col. 1, l. 45 to col. 2, l. 2, col. 9, ll. 30–32 and 44–56, col. 10, ll. 1–11, col. 12, ll. 26–36, and col. 13, ll. 3–8.) Rather, Appellants contend that the applied prior art references individually or in combination would not have suggested employing both a phosphorus-and boron- containing dispersant and a boron containing dispersant free of phosphorus in a transmission lubricating composition as required by the claims on appeal. (App. Br. 10–13.) Thus, the first critical question raised by Appellants is: Has the Examiner reversibly erred in determining that the collective teachings of Srinivasan ’441, Chrisope, and Robson or the collective teachings of Appeal 2013-000190 Application 12/784,696 6 Srinivasan ’236 and Srinivasan ’441 would have prompted one of ordinary skill in the art to employ both a phosphorus-and boron-containing dispersant and a boron containing dispersant free of phosphorus in a lubricating composition for lubricating a transmission, with a reasonable expectation of successfully obtaining friction necessary for transmission torque without shudder problems (corresponding to the desired steel-on-steel friction and steel-on-paper friction as indicated supra)? On this record, we answer this question in the negative. As found by the Examiner and explained in the earlier Decision, Srinivasan ’441, Chrisope, and Srinivasan ’236, for example, teach or would have suggested employing, inter alia, a phosphorus-and boron-containing dispersant and/or a boron containing dispersant free of phosphorus in a transmission fluid used for lubricating a transmission. (See Ans. 6 and 8, earlier Decision, Srinivasan ’441, ¶¶ [0046] and [0058], Chrisope, col. 1, ll. 50–64 and col. 10, ll. 4–8, and Srinivasan ’236, col. 13, 3–8.) In particular, Srinivasan ’441 teaches employing at least one oil soluble phosphorus-containing or a boron-containing dispersant, with the phosphorus-containing dispersant being preferably boronated. (Srinivasan ’441, ¶¶ [0046] and [0058].) Both Chrisope and Srinivasan ’236, like Srinivasan ’441, also teach employing a phosphorus-containing succinimide, a boron-containing succinimide, and/or a phosphorus- and boron-containing succinimide as a dispersant additive in their transmission fluids. (Chrisope, col. 1, ll. 50–64 and – col. 10, ll. 4–8, and Srinivasan ’236, col. 13, 3–8.) Further, Srinivasan ’441 teaches employing at least one of these dispersants, with a metal-containing detergent, and a friction modifier, in an automatic transmission fluid to provide “excellent slip-stick characteristics, anti-shudder performances, and friction durability” to meet the stringent demands and frictional requirements of electronically controlled converter clutch (ECCC) transmission and continuously Appeal 2013-000190 Application 12/784,696 7 variable transmissions (CVT), including “wet clutch performance”. (Srinivasan ’441, ¶¶ [0003], [0012], [0020], [0022] and [0024],) It follows that we find no reversible error in the Examiner’s determination that the collective teachings of Srinivasan ’441, Chrisope, and Robson or the collective teachings of Srinivasan ’236 and Srinivasan ’441 would have prompted one of ordinary skill in the art to employ both a phosphorus-and boron-containing dispersant and a boron containing dispersant free of phosphorus in a lubricating composition for lubricating a transmission, with a reasonable expectation of successfully obtaining friction necessary for transmission torque without shudder problems. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)(“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”): In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)(“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”) Appellants also contend that the employment of a mixture of a phosphorus- and boron-containing dispersant and a boron containing dispersant free of phosphorus in a transmission lubricating composition as recited in the claims on appeal imparts unexpected, synergistic benefits in terms of the desired combination of steel-on-steel friction and steel-on-paper friction. (App. Br. 10 and 13.) In support of this contention, Appellants refer to “the Examples of the Appellants’ specification (¶¶ 30-39, Tables 2 & 3).” (Id.) Thus, the second critical question raised by Appellants is: Have Appellants identified reversible error in the Examiner’s finding that Appellants have not Appeal 2013-000190 Application 12/784,696 8 demonstrated that the Specification evidence relied upon is sufficient to show that the claimed subject matter as a whole imparts unexpected results relative to the closest prior art, namely Example 3 of Srinivasan ʼ441 or Example 4 of Srinivasan ʼ236? On this record, we also answer this question in the negative. As found by the Examiner at pages 9 through 15 of the Answer and explained at pages 11 through 16 of the earlier Decision, Appellants have not demonstrated that the Specification evidence establishes unexpected results relative to the closest prior art and is reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”). In this regard, Appellants have not directed us to any meaningful side-by-side comparison in which the inventive experiment was identical to Example 3 of Srinivasan ʼ441 or Example 4 of Srinivasan ʼ236, except for the novel features of the claimed invention. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Nor have Appellants directed us to any objective evidence or scientific reasoning to show that the myriad of mixtures containing various amounts of multifarious compounds embraced by the claims on appeal would be reasonably expected to behave in the same manner as the few specific mixtures having specific amounts of particular ingredients exemplified in the Specification. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed too narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)( quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971))(“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this Appeal 2013-000190 Application 12/784,696 9 court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) It follows that Appellants have not shown reversible error in the Examiner’s finding that Appellants have not demonstrated that the Specification evidence relied upon is sufficient to show that the claimed subject matter as a whole imparts unexpected results relative to the closest prior art, namely Example 3 of Srinivasan ʼ441 or Example 4 of Srinivasan ʼ236. CONCLUSION For the reasons set forth in the Answer, the earlier Decision, and above, we affirm the Primary Examiner’s rejections of claims 1 through 15 and 32 through 37 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Srinivasan ʼ441, Chrisope, and Robson; and claims 1, 12, 14, 15, and 32 through 37 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Srinivasan ʼ236 and Srinivasan ʼ441. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation