Ex Parte Kolekar et al

Patent Trial and Appeal Board

Dec 27, 2017

14548850 (P.T.A.B. Dec. 27, 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.
14/548,850 11/20/2014 Anant S Kolekar VALVO-75US-111 4238
26875 7590 12/29/2017
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
VASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANANT S. KOLEKAR, ANDREW V. OLVER,
ADAM E. SWORSKI, FRANCES E. LOCKWOOD,
GEFEI WU, and XIURONG CHENG1
Appeal 2017-001632
Application 14/548,8502
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—15 and 17—19. We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 These are the named inventors of the present application.
2 According to Appellants, the real party in interest is Ashland Licensing and
Intellectual Property, LLC, which is the wholly-owned subsidiary of
Ashland, Inc., and Imperial Innovations Limited. See App. Br. 3.
Appeal 2017-001632
Application 14/548,850
Appellants’ invention relates generally to a lubricant which
incorporates a Group I—V base oil in combination with a silicone oil. (Spec.
1 5). Independent claims 1,15 and 19 are representative of the appealed
subject matter. Representative claims 1 and 15 are reproduced below:
1. A gear oil comprising:
a base oil selected from the group consisting of Group I-IV base
oils;
an amount of silicone oil effective to decrease the surface
tension of said base oil to less than 28 mN/m, said gear oil
having a viscosity less than 500 cSt at 25 °C.
15. A method of providing lubrication in a dip lubrication system,
said method comprising:
circulating through said dip lubrication system;
a lubricant having a surface tension of less than 25 mN/m (standard
gear/engine oil) and a viscosity less than 400 mPa.sec at 25°C.
Claims Appendix to App. Br.
Appellants (see App. Br., generally) request review of the following
rejections:
I. Claims 1, 3,4, 7, 8, 10, and 19 rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Kobayashi et al., US 5,583,095;
Dec. 10, 1996 (hereinafter Kobayashi) (Final Act. 3 — 4).
II. Claims 2, 5,6, and 9 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi. (Final Act. 5).
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Application 14/548,850
III. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kobayashi and Lockwood et al., US
2008/0242566 Al; Oct. 2, 2008 (hereinafter Lockwood).
(Final Act. 6).
IV. Claims 12—15 and 17 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kobayashi and
Boccaletti et al., US 2011/0067957 Al; Mar. 24, 2011
(hereinafter Boccaletti). (Final Act. 6 — 7).
V. Claim 18 rejected under 35 U.S.C. §103(a) as unpatentable
over the combination of Kobayashi, Boccaletti and
Lockwood. (Final Act. 7 — 8).
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 3—8.)
OPINION3
After consideration the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner’s
determination that the subject matter recited in claims 1, 3—4, 7, 8, 10 and 19
is anticipated by Kobayashi within the meaning of 35 U.S.C. § 102(a)(1),
and that the subject matter recited in claims 2, 5, 6, 9, 11—15, 17, and 18
would have been obvious over Kobayashi, alone or in combination with
3 Our discussion applies to independent claims 1,15 and 19.
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Application 14/548,850
additional prior art, to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103(a). Accordingly, we reverse Rejections I—V.4
The Examiner found Kobayashi teaches a lubricant composition
comprising a hydrocarbon base oil and a silicone oil having a surface tension
ranging from 24.9 to 25.0 mN/m. The Examiner specifically states:
Kobayashi discloses a lubricant composition for use in gears (as
recited in claim 1) (Col. 5/L. 50-52) comprising a major
concentration such as 89 wt% of a hydrocarbon base oil such as
a poly-alpha-olefin base oil (PAO base oil - Group I-IV base oil
as recited in claims 1 and 7—8) (see Abstract and Claim 16 of
Kobayashi), and 1, 11 and 100 (broadly 0.01 to 500 parts by
weight) parts by weight of a silicone oil having a KV25°C of 300
cSt wherein the hydrocarbon base oil has a surface tension of
30.6 mN/m and the composition as a whole which includes the
silicone oil has a surface tension ranging from 24.9 to 25.0 mN/m
(as recited in claims 1, 3^4 and 10) (Example 1/Table 1 and Col.
5/L. 15-18).
(Final Act. 4).
Addressing independent claim 15 the Examiner cites, in addition to
Kobayashi, Boccaletti for describing a dip lubrication system. The Examiner
determined it would have been obvious to use the gear oil of Kobayashi in
the dip system of Boccaletti (Final Act. 7).
Appellants argue Kobayashi fails to disclose a gear oil composition
comprising a silicone oil in combination with the base oil having the
4 The additional references relied upon by the Examiner in the obviousness
rejections were cited to address limitations of the dependent claims that are
not related to our discussion of the independent claims.
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Appeal 2017-001632
Application 14/548,850
required viscosity and surface tension. (App. Br. 8). Appellants argue
Kobayashi’s synthesis examples 1 and 2 fail to describe repeating Si-0
groups in the formulations utilized in examples 1 and 2. (App. Br. 9).
Appellants argue synthesis examples 1 and 2 describe organo silicon
polymers that have repeating alkylene siloxane groups but does not have
repeating siloxane groups that are required by silicone oil (as evidenced by
Hawley’s Condensed Chemical Dictionary). (App. Br. 9-10). Appellants
argue Kobayashi does not disclose the surface tension less than 28 mN/m as
required by independent claim 1 or less than 25 mN/m as required by
independent claim 19. (App. Br. 10). Appellants further argue Kobayashi’s
examples do not provide the viscosity of the blend forming the gear oil.
(App. Br. 11).
Addressing independent claims 1,15 and 19 Appellants state:
It is axiomatic that the cited prior art must disclose each and
every element of the claim in order to anticipate or make obvious
the claimed invention. As the cited prior art fails to disclose a
lubricant having a surface tension less than 25 mN/m (or 28
mN/m) and a viscosity less than 400 mPa-sec at 25° C, the prior
art fails to disclose the use of such a lubricant in a dip lubrication
system.
(App. Br. 13).
In response to Appellants’ arguments and evidence, the Examiner
asserts that Kobayashi’s description of a silicon containing polymer falls
within the definition of silicon oil provided by the Appellants (Ans. 8—9).
Regarding Kobayashi’s failure to describe the viscosity of the gear oil
composition, the Examiner states “[i]t is the position of the examiner that
since Kobayashi discloses all the claimed components that the compositions
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Appeal 2017-001632
Application 14/548,850
therein would inherently have the same viscosity measurements as those
recited in the instant claims.” (Ans. 9).
We agree with Appellants that the Examiner’s rejections of
independent claims 1,15 and 19 are not well-founded. An inherent
characteristic must be inevitable, and not merely a possibility or probability.
See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The Examiner has not
pointed to a specific composition in Kobayashi that describes a lubricant oil
having a surface tension less than 25 mN/m (or 28 mN/m) and a viscosity
less than 400 mPa-sec at 25° C (or less than 500 cSt at 25 °C) that meets the
requirements of independent claims 1,15, and 19. Rather, the Examiner
relies upon Kobayashi’s generic teaching of a composition comprising (A)
base oil and (B) silicone oil. (Ans. 9). The Examiner has not identified a
specific teaching in Kobayashi that describes a lubricant oil having a
viscosity less than 400 mPa-sec at 25° C (or less than 500 cSt at 25 °C). The
gear lubricant compositions described by Kobayashi in Tables 1 and 2 do
not provide the viscosity of the combined components A and B. (See Tables
1 and 2). Thus, the Examiner has not established that Kobayashi describes a
lubricant oil that is sufficient to support anticipation of independent claims 1
and 19 or obviousness of independent claim 15. Therefore, we reverse the
appealed rejections.
Accordingly, we reverse the Examiner’s decision to reject claims 1—
15 and 17—19 for the reasons presented by Appellants and given above.
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ORDER
The anticipation rejection of claims 1, 3, 4, 7, 8, 10, and 19 and
obviousness rejection of claims 2, 5, 6, 9, 11—15, 17, and 18 are reversed.
REVERSED
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