Ex Parte KIM

Patent Trials and Appeals BoardFeb 6, 2019

14787884 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/787,884 10/29/2015 134984 7590 02/08/2019 STIP Law Group, LLC 8894 Stanford Blvd, Suite 403 Columbia, MD 21045 FIRST NAMED INVENTOR Hyun TaeKIM 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PUS150033 7677 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 02/08/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pto@stiplaw.com myang@stiplaw.com client@stiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HYUN T AE KIM 1 Appeal2018-002406 Application 14/787,884 Technology Center 1700 Before BRADLEY R. GARRIS, GEORGIANNA W. BRADEN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellant appeals from the Examiner's rejections under 35 U.S.C. Â§ 103 of claim 1 as unpatentable over Tingler (US 8,076,809 B2, iss. Dec. 13, 2011) in view of Boffa (US 2009/0111720 Al, pub. Apr. 30, 2009) and Cook (US 2011/0030648 Al, pub. Feb. 10, 2011) and of claims 2--4 as unpatentable over these references alone or in combination with additional prior art. We have jurisdiction under 35 U.S.C. Â§ 6. 1 Hyun Tae Kim is identified as the real party in interest (App. Br. 3). Appeal2018-002406 Application 14/787,884 We AFFIRM. Appellant claims an engine oil additive composition comprising base oil, nano-diamond, and a dispersion agent consisting of oleylamine, polyalkenyl succinimide, and oleic acid (independent claim 1 ). Appellant also claims a method for preparing such a composition (independent claim 4). Additional details regarding the claimed subject matter are set forth in representative claim 1, a copy of which is taken from the Claims Appendix of the Appeal Brief and appears below. 1. An engine oil additive composition, comprising: 60 to 99% by weight of a base oil; 0.001 to 0.5% by weight of a nano-diamond the surface of which is modified into a hydrophobic state; and a dispersion agent which consists of 0.05 to 10% by weight of oleylamine, 0.01 to 5% by weight of polyalkenyl succinimide, and 0.5 to 35% by weight of oleic acid. Appellant does not present separate arguments specifically directed to dependent claims 2 and 3 (Br. 9), and the arguments concerning independent claim 4 correspond to those concerning independent claim 1 (id. at 9-10). Therefore, claims 2--4 will stand or fall with representative claim 1. We sustain the above Â§ 103 rejections for the reasons expressed in the Final Office Action and the Examiner's Answer with the following comments added for emphasis and completeness. In rejecting claim 1, the Examiner finds that Tingler discloses a lubricating oil composition comprising base oil, nano-diamond, and additives including dispersants, corrosion inhibitors, and friction modifiers but not the claimed oleylamine, polyalkenyl succinimide, and oleic acid (Final Action 2-3 (citing Tingler col. 3, 11. 1-3, 18, 19 and col. 4, 11. 24--28)). 2 Appeal2018-002406 Application 14/787,884 The Examiner additionally finds that Boffa discloses a lubricating oil composition comprising oleic acid as a corrosion inhibitor and polyalkenyl succinimide as a dispersant in amounts overlapping the claimed ranges (id. at 3 ( citing Boffa ,r,r 73, 80)) and that Cook discloses a lubricating oil composition comprising oleylamine as a friction modifier in amounts overlapping the claimed range (id. ( citing Cook ,r,r 53, 82)). Based on these findings, the Examiner concludes that it would have been obvious "to include the oleic acid, polyalkenyl succinimide, and oleylamine of Boffa and Cook in the composition of Tingler, in the amounts taught by Boffa and Cook, as Boffa and Cook teach that they are suitable corrosion inhibitors, dispersants, and friction modifiers for lubricating compositions" (id. at 3--4). Appellant argues without embellishment that the applied references fail to teach or suggest a dispersion agent having all three components at the specific ratios required by claim 1 (Br. 7). As correctly explained by the Examiner, Appellant's unembellished argument is unpersuasive because it does not address the motivation expressed in the rejection for providing Tingler with Boffa's and Cook's components and amounts in order to achieve their corrosion inhibiting, dispersing, and friction modifying functions (Ans. 6-7). Appellant accurately points out that Boffa discloses using the oleic acid as a corrosion inhibitor rather than a dispersion agent and that Cook discloses using oleylamine as a friction modifier rather than a dispersion agent (Br. 9). We agree with the Examiner that Appellant's point fails to reveal error in the rejection of claim 1 (Ans. 7). In this regard, we emphasize that Appellant does not explain why this point distinguishes the dispersion agent 3 Appeal2018-002406 Application 14/787,884 components of claim 1 from the corresponding components taught by Boffa and Cook to be corrosion inhibitors, friction modifiers, and dispersants. Finally, Appellant states that the Specification shows "superior" dispersion stability of inventive examples relative to comparative examples (Br. 8-9 ( citing, e.g., Spec. ,r 84, Table 2)) and argues that "[ o ]n this basis alone, Appellant's claimed invention is distinguishable over the cited prior art" (id. at 8). In response, the Examiner determines that the Specification results identified by Appellant are not commensurate in scope with the claims because the inventive examples are limited to certain ingredients and amounts whereas the claims are broader in these respects (Ans. 7-8). 2 This determination also is expressed in the Final Office Action (Final Action 7). We emphasize that, in the record of this appeal, Appellant does not address, and, therefore, does not show error in, the Examiner's determination (see generally Br. (no Reply Brief has been filed)). Under these circumstances, we agree with the Examiner that Appellant "has not demonstrated that the claimed compositions give unexpectedly superior results commensurate in scope with the claims" (Final Action 7). 3 2 The Examiner's determination is relevant particularly to claim 4 because this claim, unlike claim 1, is not limited to any weight range amounts for the recited oleylamine, polyalkenyl succinimide and oleic acid. 3 Additionally, we observe that the Specification disclosures cited by Appellant do not characterize the results as "unexpected." These cited disclosures characterize the results as "enhanced" (Spec. ,r 84) rather than unexpected. Similarly, the Appeal Brief characterizes the results as "superior" (Br. 8-9) rather than unexpected. "[A]ny superior property must be unexpected to be considered as evidence of non-obviousness." Pfizer, 4 Appeal2018-002406 Application 14/787,884 For the above-stated reasons and those given by the Examiner, the arguments and evidence before us in this appeal ultimately weigh most heavily in favor of a conclusion of obviousness. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in original). 5