Ex Parte Lagona

Patent Trials and Appeals BoardMar 26, 2019

15210502 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/210,502 07/14/2016 23370 7590 03/28/2019 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 Jason Lagana 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. 060691-0960816 6568 EXAMINER MCAVOY, ELLEN M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON LAGONA Appeal2018-006319 Application 15/210,502 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134 the final rejection of claims 1-30. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. Appellant's invention is directed to lubricating oil compositions and methods of controlling the formation of soot and/or sludge from engine oil exhaust (Spec. 1: 17-24). According to the Specification, the described lubricating oil compositions prevent clogging from soot and/or sludge build 1 Appellant identifies Afton Chemical Corp. as the real party in interest (Appeal Br. 3). Appeal2018-006319 Application 15/210,502 up in an engine's components, such as oil mist separators, crankcase, and drainage channels (id.). Claim 1 is illustrative ( emphasis added): 1. A lubricating oil composition, comprising: a major amount of an oil of lubricating viscosity; an amine-functionalized olefin copolymer dispersant viscosity index improver comprising a reaction product of an acylated olefin copolymer and a polyamine in an amount of from about 1.5 wt. % to about 2.0 wt. % based on the weight of the lubricating oil composition; and a dispersant comprising a reaction product of components (A) a hydrocarbyl-dicarboxylic acid or anhydride having a number average molecular weight of from about 500 to about 5000 and (B) at least one polyamine, wherein the reaction product is post-treated with (C) an aromatic carboxylic acid, an aromatic polycarboxylic acid, or an aromatic anhydride, wherein all carboxylic acid or anhydride groups are attached directly to an aromatic ring, and/or (D) a non-aromatic dicarboxylic acid or anhydride having a number average molecular weight of less than about 500, wherein the dispersant is present in an amount of from about 4 wt. % to about 5.5 wt. %. Appeal Br. 21 (Claims App.). Appellant appeals the following rejections: I. Claims 1-30 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Goldblatt et al. (US 2008/0293600 Al; published Nov. 27, 2008, "Goldblatt") in view of Mathur et al. (US 8,927,469 B2; issued Jan. 6, 2015, "Mathur"). II. Claims 1-30 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Mishra et al. (US 2004/0259742 Al; published Dec. 23, 2004, "Mishra") in view of Mathur. 2 Appeal2018-006319 Application 15/210,502 Appellant does not argue any of the dependent claims separately (Appeal Br. 7-19; Reply Br. 2-5). We select independent claim 1 as representative. Because no dependent claims are argued separately, the dependent claims will stand or fall with our analysis of the rejections of claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). FINDINGS OF FACT & ANALYSIS Rejection I. The Examiner's findings and conclusions regarding Goldblatt and Mathur are located on pages 3-5 of the Final Action dated March 15, 2017 and pages 2--4 of the Answer dated April 2, 2018. The Examiner finds that Goldblatt discloses a lubricating oil composition containing graft polymers, which suggest the claimed dispersant viscosity index improver element (Final Act. 3 ( citing Goldblatt ,r,r 2, 34, 39, 42, 47)). The Examiner further finds that Goldblatt is silent with respect to the specific dispersant comprising a reaction product of components (A}-(D) recited in claim 1 (Final Act. 4). The Examiner, however, finds that Mathur discloses "a dispersant which is the reaction product of (A) a hydrocarbyl-dicarboxylic acid or anhydride, (B) a polyamine, (C) a dicarboxyl-containing fused aromatic compound including 1,8-naphthalic anhydride, and (D) a non-aromatic dicarboxylic acid or anhydride" (id. (citing Mathur 5:61---67)). The Examiner further finds that Mathur' s composition is used to improve a lubricant's capability to handle soot or sludge within an engine (Final Act. 4; see Mathur Abstract). The Examiner determined that it would have been obvious for the ordinarily skilled artisan to have added Mathur's 3 Appeal2018-006319 Application 15/210,502 functionalized dispersant additive to Goldblatt's lubricating oil compositions "to improve the soot or sludge handling characteristics of an internal combustion engine" (Final Act. 5). Appellant argues that the Examiner has not established a motivation to combine the teachings of Goldblatt and Mathur (Appeal Br. 9-11 ). We are not persuaded by Appellant's argument. As the Examiner found, Goldblatt discloses that dispersants, such as the one described in Mathur, "help suspend insoluble engine oil oxidation products[,] thus preventing sludge flocculation and precipitation or deposition of particulates on metal parts" (Ans. 6 ( citing Goldblatt ,r 289); see also Mathur Abstract). We, therefore, agree with the Examiner that Goldblatt provides sufficient motivation for one of ordinary skill in the art to add Mathur' s dispersant to Goldblatt' s lubricating oil composition with the expectation that doing so would have helped maintain engine cleanliness (see Ans. 6). Appellant argues that the combination of Goldblatt and Mathur would have failed to provide one of ordinary skill in the art a reasonable expectation of success (Appeal Br. 11-13). In particular, Appellant argues that the range of Goldblatt's graft polymers in an amount of from about 0.02 wt.% to about 10 wt.% "is considerably broader than the range" of dispersant viscosity index improver in an amount of from about 1.5 wt. % to about 2.0 wt.% recited in claim 1 (id. at 10 (citing Goldblatt ,r 276)). Likewise, Appellant argues that Mathur' s range of functionalized dispersant in an amount of from about 0.5 wt.% to about 10.0 wt.% is similarly broad (Appeal Br. 12 (citing Mathur 7:65----67)). Appellant further argues that Goldblatt teaches that such a dispersant is optional, but may be "included in any amount up to 15 % by weight" (Appeal Br. 12 (citing 4 Appeal2018-006319 Application 15/210,502 Goldblatt ,r 278)). Appellant asserts that the applied prior art's broad ranges for the graft polymers and dispersant thus "provide[] one of skill in the art with infinite possibilities" and, consequently, "one of skill in the art would not have been able to predict that the subrange of 1.5 wt. % to 2.0 wt. % for the dispersant viscosity index improver and []the presence of the claimed dispersant is required" ( Appeal Br. 12). As the Examiner found, however, Goldblatt's lubricating oil composition teaches or suggests a dispersant viscosity index improver in a preferred amount of 0.25% to about 2% by wt. (Final Act. 3--4 ( citing Goldblatt ,r 276)), which overlaps and encompasses the range of this component recited in claim 1. We further note that Mathur's dispersant in an amount of from about 0.5 wt.% to about 10.0 wt.% (Mathur 7:65-67) similarly overlaps the range of this component recited in claim 1. The overlapping ranges of these components are sufficient to have rendered the claimed subject matter obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (holding that a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art). When the Examiner establishes a prima facie case of obviousness, "[t]he burden then shifts to the applicant, who then can present arguments and/or data to show that what appears to be obvious, is not in fact that, when the invention is looked at as a whole." In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990) ( en bane). Thus, "the burden of showing unexpected results rests on [the party] who asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). For the reasons below, Appellant has not met his burden of showing unexpected results. 5 Appeal2018-006319 Application 15/210,502 Appellant argues that the Specification's Examples demonstrate unexpected control of soot concentration and sludge formation and, thus, rebuts any established prima facie case of obviousness (Appeal Br. 13-15). In particular, Appellant argues that Examples 2 and 4, which contain at least 1. 5 wt. % of the dispersant viscosity index improver in combination with a functionalized dispersant, passed the soot induced viscosity index control test (id. at 13; see Spec. 45-50, Table 3). Appellant further argues that Examples 5, 5', 6, 6', 7, and 7' demonstrate that lubricating oils containing between 1.5 wt.% and 2.0 wt.% of the dispersant viscosity index improver in combination with a functionalized dispersant are necessary to pass both the soot induced viscosity index control test and the sludge build-up test (id. at 13-14; see Spec. 50-54, Tables 5, 6). We, however, agree with the Examiner that these results are not probative evidence of unexpected results (Ans. 6-8). For example, Appellant has not demonstrated criticality of the claimed range because Example 2, which contains an amount of 3 .0 wt. % dispersant viscosity index improver in excess of the claimed amount, passed the soot induced viscosity index control test (id. at 7). The proffered Examples, moreover, do not include a comparison of the claimed composition to the closest prior art. Goldblatt, furthermore, discloses suitable ranges of dispersant viscosity index improver amounts that encompass the 1.8 wt. % amount Appellant added to the exemplified engine lubricating oil compositions (see Goldblatt ,r 276; Spec. Tables 5, 6). 2 Therefore, Appellant's results do not rebut the Examiner's established prima facie case of obviousness. 2 Appellant directs our attention to Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (2006) to support his argument that the prior art's temperature 6 Appeal2018-006319 Application 15/210,502 Rejection II. The Examiner's findings and conclusions regarding Mishra and Mathur are located on pages 6-8 of the Final Action dated March 15, 2017 and pages 8-10 of the Answer dated April 2, 2018. The Examiner finds that Mishra discloses "the use of olefin co- polymer dispersant viscosity index improvers in lubricating oil compositions for exhaust gas recirculation engines where the additive functions to reduce or eliminate oil thickening and sludge formation ... in an amount of about 2 wt.% to about 18 wt.%" (Final Act. 6-7 (citing Mishra ,r 44)). The Examiner further finds that Mishra is silent with respect to the specific dispersant comprising a reaction product of components (A}-(D) recited in claim 1 (Final Act. 7-8). As set forth above in rejection I, the Examiner finds that Mathur discloses the specific dispersant element missing from Mishra and that Mathur's dispersant is used to improve a lubricant's capability to handle soot or sludge within an engine (Final Act. 4, 8 (citing Mathur 5:61---67); see Mathur Abstract). Appellant argues that the Examiner has not established a motivation to combine the teachings of Mishra and Mathur (Appeal Br. 16-18). Appellant's argument is not persuasive. As the Examiner determined, the ordinarily skilled artisan would have added Mathur's functionalized dispersant additive to Mishra's lubricating oil compositions "to improve the range cannot represent a specific disclosure of the endpoints of the claimed range (Reply Br. 3--4). Atofina 's holding, however, is not dispositive-at issue in Atofina was whether a prior art range anticipated the claim at issue, not whether the whether the prior art range rendered the claimed range obvious. Atofina, 441 F.3d at 998-1000. 7 Appeal2018-006319 Application 15/210,502 soot or sludge handling characteristics of an internal combustion engine" (Final Act. 8). Appellant argues that the combination of Mishra and Mathur would have failed to provide one of ordinary skill in the art a reasonable expectation of success (Appeal Br. 18-19). In particular, Appellant argues that "the broad, largely non-overlapping range for the dispersant viscosity index improvers described in Mishra, along with the broad range for the functionalized dispersant as described in Mathur, provides one of skill in the art with infinite possibilities" (id. at 19). As the Examiner found, however, Mishra's lubricating oil composition teaches or suggests a dispersant viscosity index improver in an amount of about 2 wt. % to about 18 wt. % (Final Act. 6-7 ( citing Mishra ,r 44))3 (emphasis added), which overlaps the range of this component recited in claim 1. As set forth above in rejection I, Mathur's dispersant amount similarly overlaps the range of this component recited in claim 1. Therefore, the overlapping ranges of these components is sufficient to have rendered the claimed subject matter obvious. See Peterson, 315 F.3d at 1329. On these facts, the Examiner has established a prima facie case of obviousness, which shifts the burden to Appellant of showing probative rebuttal evidence of unexpected results. See Dillon, 919 F.2d at 696; 3 We note that Mishra explicitly discloses that "[t]he amount of dispersant viscosity index improver in the lubricating oil ... can be from about 20 wt.% to about 18 wt.%" (Mishra ,r 44). In view of Mishra's claim 10, which limits "the amount of the dispersant viscosity improver in the lubricating oil ... from 2 weight percent to about 18 weight percent," one of ordinary skill in the art would have gleaned from Mishra's disclosure in paragraph 44 that "about 20 wt.%" should instead read "about 2.0 wt.%." 8 Appeal2018-006319 Application 15/210,502 Klosak, 455 F.2d at 1080. As the Examiner found, however, "Mishra specifically teaches the exact same amount of about 2. 0 wt.%" of the dispersant viscosity index improver that Appellant added to the exemplified engine lubricating oil compositions (Ans. 12 (emphasis added); see Spec. Table 5 ( 1. 8 wt. % amount of dispersant viscosity index improver added)). For the reasons set forth above in rejection I and in the Answer, Appellant has not met his burden of showing unexpected results. On this record, we find that the preponderance of the evidence favors the Examiner's obviousness conclusion with regard to claim 1. Accordingly, we affirm the Examiner's Â§ 103 rejections of claims 1-30. 37 C.F.R. Â§ 4I.37(c)(l)(iv). DECISION The Examiner's decision 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)(l)(iv). ORDER AFFIRMED 9