Ex Parte Milner

Patent Trial and Appeal Board

Aug 11, 2017

12840386 (P.T.A.B. Aug. 11, 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.
14677-26 1030
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
12/840,386 07/21/2010
45473 7590 08/14/2017
BGL/Research Triangle Park
P.O. BOX 110285
RESEARCH TRIANGLE PARK, NC 27709
Jeffrey L. Milner
08/14/2017 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 JEFFREY L. MILNER
Appeal 2016-001748
Application 12/840,386
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA,
JANE E. INGLESE, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 3—11, and 14—29. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 In this decision, we refer to the Specification filed July 21, 2010, the Final
Office Action mailed November 5, 2014 (“Final Act.”), the Appeal Brief
filed June 8, 2015 (“Appeal Br.”), and the Examiner’s Answer mailed
September 30, 2015 (“Ans.”).
2 Appellant identifies the real party in interest as Afton Chemical
Corporation. Appeal Br. 2.
Appeal 2016-001748
Application 12/840,386
The claims are directed to a combination of phosphorus-containing
compounds for use as anti-wear additives in lubricant compositions.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A lubricant composition comprising:
(a) a first phosphorus compound formed by:
(i) reacting an 0,0-dihydrocarbyl
phosphorodithioic acid with an epoxide to form a product;
(ii) reacting the product with phosphorus pentoxide
to produce an acid phosphate intermediate; and
(iii) neutralizing at least a major portion of the
intermediate with at least one first amine;
(b) a second phosphorus compound formed by reacting a
sulfur source with a dihydrocarbyl phosphite;
(c) a third phosphorus compound formed by reacting an
acid phosphate selected from the group consisting of amyl acid
phosphate, bis-2-ethylhexyl acid phosphate, and diamyl acid
phosphate with at least one second amine;
(d) wherein the first phosphorus compound is present in
the lubricant composition to provide between about 120 and
about 350 ppm phosphorus to the lubricant composition and
said first and second amine may be the same or different; and
(e) wherein the total amount of phosphorus present in the
lubricant composition is between about 500 and about
1500 ppm.
Appeal Br. 12.
DISCUSSION
The Examiner maintains the rejection of claims 1, 3—11, and 14—29
under 35 U.S.C. § 103(a) over Le Suer (US 3,197,405, issued July 27, 1965)
in view of Schwind (US 5,403,501, issued April 4, 1995) and Hewette
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Appeal 2016-001748
Application 12/840,386
(US 2007/0225182 Al, published September 27, 2007). Final Act. 2—6; see
also Ans. 2—6.3
The Examiner finds that Le Suer discloses additives for lubricating
compositions. Final Act. 2. Specifically, the Examiner finds that the
additives are prepared by reacting an 0,0-dihydrocarbyl phosphorodithioic
acid with an epoxide, as recited in step (a)(i) of claim 1, in order to form a
triester, reacting the triester with phosphorus pentoxide as recited in
step (a)(ii) of claim 1, and then neutralizing the product with an amine as
recited in step (a)(iii) of claim 1, forming the phosphorus compound (a) of
claim 1. Final Act. 2 (citing Le Suer 2:27—30, 47—53; and 5:1—9:75
(Examples 1—20)). The Examiner finds Le Suer’s lubricant compositions
can include additives other than those specifically recited (Le Suer 11:26—
33), but Le Suer does not disclose: (i) the second phosphorus of component
(b), (ii) the third phosphorus compound of component (c), and (iii) the
concentration of the first phosphorus compound (component (a)) present in
the lubricant composition within the range recited in (d) claim 1. Final Act.
4.
Regarding (i), the Examiner finds that Schwind discloses a
monothiophosphate additive for lubricating compositions, prepared by the
reaction of a dihydrocarbyl phosphite with a sulfur source meeting the
recitations of component (b) of claim 1. Final Act. 4 (citing Schwind 14:12—
38, 15:47—16:27). The Examiner determines that one of ordinary skill in the
art would have been led to include the monothiophosphates of Schwind in
3 The provisional double patenting rejections over U.S. Application No.
13/431,573 (“the ’573 application”), have been withdrawn by the Examiner
in the Answer in light of the abandonment of the ’573 application.
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Appeal 2016-001748
Application 12/840,386
the compositions of Le Suer because Schwind teaches that they are useful
additives in lubricants, including gear lubricants. Final Act. 4—5; see also
Schwind 2:23—26.
Regarding (ii), the Examiner finds that Hewette discloses a gear
lubricant comprising a friction modifier composition. Final Act. 5 (citing
Hewette 10—14). The Examiner finds that Hewette discloses friction
modifiers include amine salts that are obtainable from the reaction of an acid
phosphate and an amine, and specifically discloses the acid phosphate can be
amyl acid phosphate (amylphosphoric acid) meeting the recitations of
component (c) of claim 1. Final Act. 5 (citing Hewette 29, 30-47). The
Examiner determines that one of ordinary skill in the art would have been
led to include the friction modifier composition of Hewette, including the
amine salts, in the lubricating composition of Le Suer because Hewette
teaches its friction modifiers impart advantageous properties to gear and/or
transmission lubricants. Final Act. 5 (citing Hewette 117).
Regarding (iii), the Examiner finds Le Suer teaches a phosphorus
content supplied by the phosphorus-containing additive of Le Suer that
encompasses the range recited in (d) of claim 1. Final Act. 5 (citing
Le Suer 11:14—16).
The Examiner finds that Le Suer, Schwind, and Hewette alone do not
disclose a total phosphorus concentration within the range recited in claim 1.
Final Act. 4. The Examiner finds, however, that the phosphorus-containing
components of Schwind and Hewette will, in combination with the
phosphorus-containing additive of Le Suer, provide a total phosphorus
content in the lubricant composition overlapping or encompassing the range
recited in (e) of claim 1. Id. at 6.
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Appeal 2016-001748
Application 12/840,386
Appellant argues that the Examiner has not provided a sufficient
reason or rationale for combining the teachings of Le Suer, Schwind and
Hewette, but instead relies on improper hindsight for combining the
references to arrive at a composition comprising components a), b) and c)
recited in claim 1. Appeal Br. 3.
Appellant’s argument is not persuasive of reversible error. As the
Examiner responds in the Answer, motivations for combining Le Suer,
Schwind, and Hewette are set forth in the Final Action, and have not been
addressed by Appellant. Ans. 7. Particularly, Le Suer discloses gear
lubricants which can contain additional additives, and Schwind and Hewette
disclose additives which are useful in gear lubricants and impart favorable
properties. Id.
Appellant argues that the Examiner incorrectly finds that the ranges
disclosed in Le Suer, Schwind and Hewette overlap and/or encompass the
claimed ranges. Appeal Br. 3.
Appellant’s argument is not persuasive of reversible error in the
rejection. In the Answer, the Examiner provides a detailed explanation of
why he finds that Le Suer discloses the concentration of the first phosphorus
compound is present in the lubricant composition in the range recited in
component (d) of claim 1, and additionally why he finds Le Suer, Hewette,
and Schwind in combination teach the total amount of phosphorus present in
the lubricant composition is within the range recited in component (e)
recited in claim 1. Ans. 7—10. Appellant did not file a Reply Brief, and
thus, does not dispute these findings set forth in the Answer.
Finally, Appellant argues that data supplied in the Specification and
Declaration under 37 C.F.R. § 1.132 executed by Kristine Durbin on
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Appeal 2016-001748
Application 12/840,386
August 4, 2014 (“the Durbin Declaration”), is sufficient to demonstrate
unexpected, superior results to rebut any conclusion of obviousness. Appeal
Br. 3.
We have considered the evidence as a whole, and agree with the
Examiner’s determination that it is not commensurate in scope with
independent claim 1. See Ans. 11—12. Both of the inventive examples from
the Specification presented in the Durbin Declaration contain dibutyl
hydrogen phosphite as component (b) in an amount of 450 ppm, and amyl
acid phosphate as component (c) in an amount of 300 ppm (Spec. 83—84),
but claim 1 is not so limited. Claim 1 allows for a dihydrocarbyl phosphite
as component (b), and for bis-2-ethylhexyl acid phosphate and diamyl acid
phosphate, rather than amyl acid phosphate, as component (c). Claim 1 also
allows for components (b) and (c) to be present in any concentration as long
as the total phosphorus content of the composition falls within the range
recited in (e) of claim 1. Thus, although the two inventive examples
presented in the Durbin Declaration may show superior results, as the
Examiner explains in the Answer (Ans. 11—12), Appellant has not provided
sufficient evidence to support a conclusion that compositions containing
other phosphorus compounds within the scope of components (b) and (c) in
other amounts falling within claim 1 would be expected to behave in the
same manner as the tested compositions. See In re Kollman, 595 F.2d 48, 55
(CCPA 1979) (Multiple examples and data points purportedly showing
unexpected results did not provide an adequate basis to determine that the
great number of compositions contained in the claims would behave the
same way.); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
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Application 12/840,386
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.’”).
Accordingly, based on the totality of the appeal record, including due
consideration of Appellant’s arguments and evidence, we determine that the
preponderance of the evidence weighs most heavily in favor of obviousness
of the subject matter recited in claims 1, 3—11, and 14—29 within the
meaning of 35 U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3—11, and
14—29 is affirmed.
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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