Ex Parte Iyer et al

Patent Trial and Appeal Board

Nov 28, 2014

12784696 (P.T.A.B. Nov. 28, 2014)

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.)
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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”.
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(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:
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(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
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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
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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
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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
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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
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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

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