Ex Parte Markovitz et alDownload PDFPatent Trial and Appeal BoardAug 1, 201612491913 (P.T.A.B. Aug. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/491,913 90363 7590 Hansen IP Law PLLC P.O. Box 300069 Waterford, MI 48330 0612512009 08/02/2016 FIRST NAMED INVENTOR Michael Markovitz 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. 5005-0001 6271 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 MAILDATE DELIVERY MODE 08/02/2016 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 MICHAEL MARKOVITZ, GUY VERANDINO, and ANDREY FACTOR Appeal2015-002627 Application 12/491,913 Technology Center 1700 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-12, 15-17, 26, 29, 31, and 32. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is N anotech Lubricants, LLC. Appeal Br. 2. Appeal2015-002627 Application 12/491,913 STATEMENT OF THE CASE Appellants describe the present invention as relating to anti-wear lubricant compositions that include nanodiamonds. Spec. i-f 2. Appellants seek to avoid undesirable clumping and electrical charge regions. Id. at i-f 4. Claim 1, reproduced below, is illustrative of the claimed subject matter: A method of making a lubricant composition, comprising: combining a lubricating fluid, an added amount of water, and carbon nanoparticles, wherein the carbon nanoparticles include nanodiamonds; and mixing the combination of lubricating fluid, water, and carbon nanoparticles to produce a mixture of lubricating fluid, water, and carbon nanoparticles, wherein the amount of water present in the mixture ranges from greater than 200 ppm to about 2000 ppm by weight of the mixture, and the amount of carbon nanoparticles in the mixture ranges from about 20 ppm to about 400 ppm by weight of the mixture. Appeal Br.2 23 (Claims Appendix). REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Jacob Gao et al. (hereinafter "Gao") Kozyuk Hong et al. (hereinafter "Hong") US 2003/0107948 Al June 12, 2003 US 2004/0014615 Al Jan. 22, 2004 US 2005/0047271 Al March 3, 2005 US 2007/0158610 Al July 12, 2007 2 In this decision, we refer to the Final Office Action mailed June 12, 2012 ("June 12, 2012 Act."), the Non-Final Office Action mailed December 31, 2013 ("Dec. 31, 2013 Act."), the Final Office Action mailed June 10, 2014 ("Final Act."), the Appeal Brief filed September 10, 2014 ("Appeal Br."), the Examiner's Answer mailed November 4, 2014 ("Ans."), and the Reply Brief filed January 2, 2015 ("Reply Br."). 2 Appeal2015-002627 Application 12/491,913 Nakagawa Mabuchi et al. (hereinafter "Mabuchi") US 2008/0248979 Al Oct. 9, 2008 US 2009/0018037 Al Jan. 15, 2009 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1-3, 12, 17, 26, and 29 under 35 U.S.C. § 103 as unpatentable over Nakagawa in view ofMabuchi. Ans. 2. Rejection 2. Claim 4 under 35 U.S.C. § 103 as unpatentable over Nakagawa in view ofMabuchi as applied in Rejection 1 in further view of Kozyuk. Id. at 4. Rejection 3. Claims 5-11 under 35 U.S.C. § 103 as unpatentable over the combination of Nakagawa, Mabuchi, and Kozyuk as applied in Rejection 2 further in view of Hong. Id. at 5. Rejection 4. Claims 15 and 16 as unpatentable over Nakagawa in view of Mabuchi as applied in Rejection 1 in further view of Jacob. Id. at 6. Rejection 5. Claims 31 and 32 as unpatentable over Nakagawa in view of Mabuchi as applied in Rejection 1 in further view of Gao. Id. at 7. 3 ANALYSIS We sustain the Examiner's § 103 rejections based on the findings of fact, conclusions of law, and rebuttals to arguments well-expressed by the Examiner in the Final Action and in the Answer. We provide additional comments below for emphasis. Rejection 1, claims 1-3, 12, 17, 26, and 29. The Examiner rejects claims 1-3, 12, 17, 26, and 29 as obvious over Nakagawa in view of 3 Appellants' Claim Appendix lists claim 30 as "previously presented." The Examiner has allowed that claim. 3 Appeal2015-002627 Application 12/491,913 Mabuchi. Appellants first raise arguments with respect to claim 1. Appeal Br. 4. Claims 2, 3, 12, 17, and 29 stand or fall with claim 1 because Appellants do not separately argue those claims. 37 C.F.R. § 41.37(c)(l)(iv) (2013). Appellants argue that a person of skill in the art viewing Mabuchi would not be motivated to combine Nakagawa's teachings for preparing the composition because Nakagawa already teaches a preparing method. Appeal Br. 4--5. The Examiner finds that Nakagawa teaches a lubricant comprising 100 to 30,000 ppm diamond nanoparticles. Dec. 31, 2014 Act. 3--4; Nakagawa i-fi-f 111, 112. The Examiner also finds that Mabuchi teaches adding nanoparticles to a lubricating composition similar to that of Nakagawa as a dispersion in water. Final Act. 4; Mabuchi i177. Use of Mabuchi' s teaching of a water dispersion to create the composition of Nakagawa is a predictable use of a prior art element according to its established function. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, we agree with the Examiner that one of ordinary skill would have been motivated to make use of this teaching. Ans. 8. Appellants also argue that the prior art references teach away from using water dispersion with Nakagawa's nanodiamond concentration because Mabuchi teaches that nanoparticle content of less than 500 ppm is "not preferable" and because Mabuchi's Example 4 has 400 ppm nanodiamonds and is referred to as a "Comparative Example." Appeal Br. 5. The Examiner finds that Nakagawa, however, teaches carbon nanodiamond concentration as low as 100 ppm thus overlapping the claimed range. Ans. 8. The Examiner also finds that compositions in Nakagawa's Table 1 contain 100 ppm nanodiamond yet give friction coefficients similar to the 4 Appeal2015-002627 Application 12/491,913 inventive examples in Tables 1-3 of Mabuchi. Appellants do not persuasively rebut the Examiner's findings of fact. We thus agree with the Examiner that Mabuchi's teachings do not teach away from the broader disclosure of Nakagawa. Ans. 9; see also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) ("all disclosure of the prior art, including unpreferred embodiments, must be considered"). Because Appellants identify no reversible error, we sustain the Examiner's rejection of claims 1-3, 12, 17, and 29. Because Appellants raise separate arguments regarding claim 26, we address that claim below. Claim 26 recites, "The method of claim 1, wherein the amount of water present in the mixture ranges from about 250 ppm to about 1600 ppm by weight of the mixture." Appeal Br. 26 (Claims Appendix). Appellants argue that the cited references do not teach this limitation because Mabuchi teaches a minimum water concentration of 2000 ppm. Appeal Br. 9-10; see also June 12, 20123 Act. 3 (Examiner calculates this 2000 ppm minimum water based upon Mabuchi's minimum of 500 ppm nanoparticle present as, at a maximum, 20% dispersion in water). The Examiner, however, finds that one of ordinary skill preparing the composition of Nakagawa (with minimum nanodiamond content of 100 ppm) and following the teachings of Mabuchi would similarly prepare a dispersion in water having 5 to 20% nanodiamond content. Ans. 10. The water concentration could therefore be as low as 400 ppm. 4 Appellants identify no reversible error regarding the 4 A dispersion having 100 ppm nanodiamond and 400 ppm water would have 20% nanodiamond content (100 I (100+400)=20%). The Examiner calculates a minimum of 500 ppm. Ans. 10. This error is harmless, however, as the correct calculation has even greater overlap with the recited range of claim 26. 5 Appeal2015-002627 Application 12/491,913 Examiner's findings on this point. Thus, we agree with the Examiner that claim 26' s recited water concentration is met by the combined teachings of Nakagawa and Mabuchi. Appellants also argue that evidence of unexpected results rebuts the obviousness of claim 26 over Nakagawa and Mabuchi. Appeal Br. 9-12. Appellants identify two different unexpected results from the composition of claim 26: avoiding the need for a dispersant and achieving a desired level of friction reduction with a reduced number of nanoparticles. Appeal Br. 9-12. With respect to avoiding the need for a dispersant, we note that claim 26 does not forbid inclusion of a dispersant. Thus, lack of a dispersant cannot be a distinguishing or unexpected feature given the breadth of the claim. See, e.g., In re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."') Moreover, the September 11, 2012, and October 25, 2012, Declarations of joint inventor Guy Verandino do not support that this is an unexpected result for a range of oils having water content ranging from about 250 ppm to about 1600 ppm. Rather, Mr. Verandino states that this is an advantage with respect to the composition referenced in the Specification comprising Venom® SM/CF 5W30 Synthetic Motor Oil and 1667 ppm water. Sept. 11, 2012, Verandino Deel. i-fi-14, 8, 9. Mr. Verandino also states this is an advantage for compositions having various oils and 2000 ppm of water added. Oct. 25, 2012, Verandino Deel. i-f l l(d). A preponderance of the evidence does not establish that this advantage will exist, for example, at 6 Appeal2015-002627 Application 12/491,913 the 250 ppm water (the lower end of claim 26's recited range). The alleged unexpected result is thus not reasonably commensurate with claim scope. In re Greenfield, 571 F.2d at 1189; In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("Evidence of secondary considerations must be reasonably commensurate with the scope of the claims."). With respect to achieving a desired level of friction reduction with a reduced number of nanoparticles, the Examiner correctly finds that not all tested compositions show superior results. Ans. 11. Mr. Verandino' s Declaration does not show superior results commensurate in scope with claim 26. In particular, Mr. Verandino states that the tested "Group I/III blend and the low viscosity Group IV lubricants do not show friction reductions in the claimed range of nanoparticles at the highest water level relative to the zero added water case in all instances." Oct. 25, 2012, Verandino Deel. i-f 13. Appellants' data shows, for example, that at 100 ppm nanodiamonds and 2000 ppm water, there is less torque reduction than with no water at all for the Group I oil test results depicted in Figure 1. Id. at i-f 12. Thus, Appellants have not established unexpectedly superior results reasonably commensurate in scope with claim 26. We therefore sustain the Examiner's rejection of claim 26. Rejection 2, claim 4. Claim 4 recites "[t]he method of claim 1, wherein the step of mixing comprises providing a high shear mixing device, and mixing the combination of lubricating fluid, water, and carbon nanoparticles with the high shear mixing device .... " Appeal Br. 23 (Claims Appendix). The Examiner rejects claim 4 as obvious over Nakagawa in view ofMabuchi in further view ofKozyuk. The Examiner finds that Kozyuk's high shear mixing device is an "advantageous method of 7 Appeal2015-002627 Application 12/491,913 combining a liquid component and substantially insoluble components, as encountered in the composition of Nakagawa." Final Act. 6; see also Kozyuk i1i12, 3. Appellants argue that there would be no reason to consider using a mixing device with Nakagawa or Mabuchi because Mabuchi teaches "[ w ]hen such particle is dispersed in liquid, it tends to readily disperse so as to hardly sediment." Appeal Br. 12 (quoting Mabuchi i-f 10). The portion of Mabuchi quoted by Appellants indicates that some sediment may occur. Moreover, the Examiner correctly finds that Nakagawa and Mabuchi teach use of dispersing agents in at least some examples. Ans. 12. Thus, a preponderance of the evidence supports that a person of skill in the art would have been inclined to further mix the Nakagawa/Mabuchi composition in at least some scenarios. Using Kozyuk for this purpose is no more than predictable use of a prior art element according to its established function. KSR Intern. Co., 550 U.S. at 416-17 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results"). We thus agree that the combination would have been obvious and sustain the rejection of claim 4. Rejection 3, claims 5-11. Claim 5 recites "[t]he method of claim 4, further comprising subjecting the mixture to ultrasonic stimulation." Appeal Br. 23 (Claims Appendix). The Examiner rejects claims 5-11 as obvious over Nakagawa, Mabuchi, and Kozyuk further in view of Hong. Hong teaches using ultrasonication to form a suspension of nanoparticles in a fluid. Dec. 31, 2013 Act. 7. Hong also teaches that ultrasonication is the least destructive method of forming carbon nanoparticle suspensions. Id.; Hong i160. 8 Appeal2015-002627 Application 12/491,913 Appellants argue that a person of skill in the art would not apply both high shear mixing and ultrasonication and that a person of skill would not look to Hong because it relates to a nanoparticle heat transfer fluid rather than a nanoparticle lubricant. Appeal Br. 14. We agree with the Examiner, however, that it would have been obvious to use high shear mixing and ultrasonication in combination. Ans. 13. A person of skill would be inclined to use Hong's ultrasonication with a nanoparticle lubricant because Hong teaches "ultrasonication is the least destructive to the structures of carbon nanoparticles." Hong i-f 60. Use of Hong's ultrasonication to further mix the nanoparticle lubricant composition is no more than a predictable use of a prior art element according to its established function. KSR Intern. Co., 550 U.S. at 417. Claims 6-10 stand or fall with that claim 5 because Appellants do not separately argue those claims. 37 C.F.R. § 41.37(c)(l)(iv) (2013). We thus sustain the Examiner's rejection of claims 5-10. Claim 11 recites "[t]he method of claim 5, wherein the step of subjecting the mixture to ultrasonic stimulation increases the temperature of the mixture by an amount ranging from about 5Q F to about 60Q F." Appeal Br. 24 (Claims Appendix). Appellants argue that the Examiner lacks evidence that Hong's method will meet this limitation. Appeal Br. 16. Hong explains that "the mixture is sonicated intermittently to avoid overheating. It is well known that overheating can break the carbon nanotubes to lose conjugated bonds and hence lose their beneficial physical properties." Hong i-f 60; Ans. 14. From this, a person of skill would understand that sonication necessarily creates some temperature increase and that overheating should be avoided so that nanostructures are not destroyed. 9 Appeal2015-002627 Application 12/491,913 The degree of sonication and degree of heating are thus result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."). Hong's teaching establishes that optimizing this variable would be within the capabilities of a person of skill in the art. Because temperature increase as a result of ultrasonication was a known result effective variable at the relevant time, we agree with the Examiner's conclusion that it would have been obvious to reach the temperature values recited in claim 11 based on the prior art's teachings. We thus sustain the Examiner's rejection of claim 11. Rejection 4, claims 15-16. Claim 15 recites "[t]he method of claim 1, wherein the step of mixing comprises combining the lubricant fluid, the added amount of water, and the carbon nanoparticles in a vessel to define a mixture precursor having a liquid level, the method further comprises providing a mix head disposed beneath the liquid level, and the step of mixing comprises drawing a volume of the mixture precursor into the mix head and expelling the volume in a direction that is radially outward of the mix head." Appeal Br. 25 (Claims Appendix). The Examiner rejects claims 15 and 16 as obvious over Nakagawa in view ofMabuchi in further view of Jacob. The Examiner correctly found that Jacob teaches a mixer meeting the elements of claim 15. Dec. 31, 2013 Act. 7-8. Appellants present arguments similar to those presented with regard to the Kozyuk reference. Appeal Br. 17-18. As explained above, these arguments fail to identify error. Nakagawa and Mabuchi suggest mixing may be beneficial and use of 10 Appeal2015-002627 Application 12/491,913 Jacob's mixer is no more than predictable use of a prior art element according to its established function. KSR Intern. Co., 550 U.S. at 417. Claims 16 stands of falls with claim 15 because Appellants do not separately argue that claims. We thus sustain the Examiner's rejection of claims 15 and 16. Rejection 5, claims 31 and 32. Claim 31 recites "[t]he method of claim 1, wherein the lubricating fluid comprises at least one selected from an API Group I base stock and an API Group II base stock, the lubricating fluid has a kinematic viscosity ranging from about 20 cSt at 40°C to about 350 cSt at 40°C, the amount of water in the mixture ranges from greater than 200 ppm to about 2000 ppm by weight of the mixture, and the amount of nanodiamonds in the mixture ranges from about 12 ppm to about 3 60 ppm by weight of the mixture." Appeal Br. 27 (Claims Appendix). Claim 32 recites "The method of claim 31, wherein the amount of water in the mixture ranges from about 250 ppm to about 1600 ppm." Id. The Examiner rejects claims 31 and 32 as obvious over Nakagawa in view of Mabuchi in further view of Gao. Gao discloses an engine oil as recited in claim 31 and a trinuclear organomolybdenum antioxidant. Dec. 31, 2013 Act. 8-9. Gao teaches that its oil formulation leads to enhanced oxidation stability and fuel efficiency. Id.; Gao i-f 4. Appellants argue that Gao only achieves its efficiency when paired with a trinuclear organomolybdenum and that Nakagawa teaches that lubricants with organic molybdenum compounds are not sufficient for improved fuel economy. Appeal Br. 19-20. The Examiner, however, finds that the organomolybdenum compounds Nakagawa refers to are not the same as the antioxidant of Gao (Ans. 15), and Appellants do not 11 Appeal2015-002627 Application 12/491,913 persuasively refute this point. We thus sustain the Examiner's rejection of claim 31. Appellants also argue that unexpected results support the patentability of claim 32. Appeal Br. 20-21. The Examiner correctly finds, however, that the Group I base oil of claim 3 2 is one of the base oils that Appellants' evidence does not establish superior results for. Ans. 15-16. We thus sustain the Examiner's rejection of claim 32. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1-12, 15-17, 26, 29, 31, and 32. 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 12 Copy with citationCopy as parenthetical citation