Infineum International Limited

Patent Trials and Appeals Board

Jul 16, 2020

14190151 - (D) (P.T.A.B. Jul. 16, 2020)

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.
14/190,151 02/26/2014 Jonathan Ayutsede PF2014M001 3174
25553 7590 07/16/2020
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
07/16/2020 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 JONATHAN AYUTSEDE, CATHERINE H. FRAMPTON,
LAURA PARSONS, STEPHEN J. MARSH, and ROBERT W. SHAW

Appeal 2019-006370
Application 14/190,151
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7, 8, and 10–12. We have
jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard in this
appeal on July 10, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Infineum
International Limited. Appeal Br. 1.
Appeal 2019-006370
Application 14/190,151

2
Appellant’s invention is directed to lubricating oil compositions
having low levels of sulphated ash which are suitable for extended drain
interval applications (Spec. 1:4–6; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A lubricating oil composition having a TBN of from about
4 to about 15 mg KOH/g as determined by ASTM D2896, a
sulphated ash content of less than or equal to 1.0 mass % as
determined by ASTM D874, the composition comprising or
made by admixing:
(A) an oil of lubricating viscosity in a major amount;
(B) one or more oil-soluble or oil-dispersible overbased
magnesium salicylate detergent(s) having a TBN of from about
320 to about 450 mg/g KOH as determined by ASTM D2896,
as an additive in an amount providing said lubricating oil
composition with from about 0.1 to about 0.4 mass% of Mg as
determined by ASTM D5185, and from about 7 to about 15
mmols of magnesium salicylate soap per kilogram of
lubricating oil composition; and,
(C) an oil-soluble or oil-dispersible ashless alkylene
bis(dihydrocarbyldithiocarbamate), as an additive in an amount
of from about 0.2 to about 1 mass%, based on the total mass of
said lubricating oil composition.
Appellant appeals the following rejection:
Claims 1–3, 5, 7, 8, and 10–12 are rejected under 35 U.S.C. § 103 as
obvious over Andoh (EP 1104800 A2, published June 6, 2001).
Appellant’s arguments focus on claim 1 only (Appeal Br. 4–7).
Claims 2, 3, 5, 7, 8, and 10–12 will stand or fall with our analysis of the
rejection of argued claim 1.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 1 over Andoh are located on pages 3 to 4 of the Final
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Application 14/190,151

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Action. The Examiner finds, inter alia, that Andoh teaches a lubricating oil
composition including a magnesium salicylate, which has a total base
number (TBN) of about 320 or higher (Final Act. 3; Ans. 6). The Examiner
finds that the TBN of the magnesium salicylate either overlaps with the TBN
recited in claim 1 (i.e., about 320 to about 450 mg/g KOH) or is close
enough (i.e., 300 in Andoh versus about 320 in claim) to the lower limit
recited in claim 1 to expect the compositions to have the same properties
(Final Act. 3; Ans. 6).
Appellant argues that Andoh does not teach anything regarding the
ability of an ashless dithiocarbamate to improve the acid neutralizing effect
of any detergent (Appeal Br. 5). Appellant argues that nothing in Andoh
would have led a person of ordinary skill in the art to combine an ashless
dithiocarbamate and a highly overbased magnesium salicylate detergent
(Appeal Br. 5). Appellant contends that Andoh exemplifies the use of
calcium salicylate detergents having a TBN far below 320 mg/g KOH with a
preference for TBN from 50 to 250 mg/g KOH (Appeal Br. 5). Appellant
argues that Andoh’s preference for a TBN value below 300 mg/g KOH
teaches away from the claimed TBN values (Appeal Br. 6).
Contrary to Appellant’s arguments, Andoh does not need to teach that
the addition of dithiocarbamate improves the acid neutralizing effect of any
detergent for it to render obvious the claimed subject matter. Andoh teaches
that the oil composition may include an ashless dithiocarbamate and a metal-
containing detergent, which may be magnesium salicylate (¶¶ 15, 26, 29, 30,
37). Andoh’s reason for including the ashless dithiocarbamate and the
magnesium salicylate does not need to be the same as Appellant’s reason for
the combination.
Appeal 2019-006370
Application 14/190,151

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Appellant’s arguments regarding Andoh’s preference for and
exemplification of metal-containing detergents with TBN numbers less than
300 is not controlling because a reference is good for all that it teaches
including unpreferred embodiments. In re Lamberti, 545 F.2d 747, 750
(CCPA 1976). In the present case, the Examiner finds correctly that Andoh
teaches that the TBN for the magnesium salicylate may be “150-300 or
higher” (Ans. 6). The Examiner finds that the claim uses the term “about” at
the lower end of the range and may include values less than 320 TBN such
as 300 TBN (Ans. 6). The Specification does not set forth a range for the
term of degree “about.” However, the Specification includes magnesium
salicylates having a TBN of at least 250, more preferably at least 300, most
preferably at least 320 mg/g KOH (16:22–26). In light of the Specification,
the term “about” appears to have a broad construction and reasonably
includes 300 TBN.
Moreover, Andoh includes magnesium salicylates having TBN values
higher than 300, which would include the claimed TBN value of 320 and
higher. Andoh’s disclosures or preferences do not discourage or otherwise
teach away from TBN values higher than 320.
Appellant argues that the comparative data in the present specification
evinces unexpected results (Appeal Br. 6). Appellant contends that the
comparative data is representative of the claimed invention and is
commensurate in scope with the claims (Appeal Br. 6). Appellant argues
that although the results for inventive Lubricant 1 in the Specification are
not reported, the results for Lubricant 1 can be extrapolated from the
comparison of Lubricant B and Lubricant C (Appeal Br. 6–7). Appellant
contends that the dithiocarbamate amount in the examples (i.e., 0.4%) is in
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Application 14/190,151

5
the middle of the narrow range recited in claim 1 (i.e., 0.2 to 1 mass%) and
the results showed a robust level of improvement at the level tested (Appeal
Br. 7). Appellant contends that these findings suggest that some level of
improvement would have also been provided in the presence of a lesser
amount of noted additive (Appeal Br. 7). Appellant argues that the
Examiner makes no argument based on scientific reasoning as to why the
results would differ materially with other compositions of the present
invention (Appeal Br. 7).
The Examiner finds that Appellant provides results and data for a
single embodiment of the claimed invention (i.e., Lubricant 2) (Ans. 9–10).
The Examiner finds that ranges of the various materials in the claims are
broader than the evidence provided in the single embodiment of Lubricant 2
(Ans. 10). The Examiner finds that Appellant’s evidence fails to cover the
end points of the various ranges, including TBN range, magnesium
salicylate soap range, and amount of magnesium (Ans. 10). The Examiner
further finds that Appellant fails to provide any extrapolated data for
Lubricant 1 (Ans. 11–12). We agree.
To be probative of nonobviousness the data provided must be
reasonably commensurate in scope with the claimed invention. In re Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011). Applicant does not need to test every
embodiment within the scope of his or her claims where an applicant
demonstrates unexpected results and provides an adequate basis to support
the conclusion that other embodiments falling within the claim will behave
in a similar manner. Id.
In the present case, Appellant relies on a single embodiment (i.e.,
Lubricant 2) as a basis for establishing unexpected results for the entire
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scope of claim 1. This is not sufficient evidence. Claim 1 includes ranges
for the various composition components (i.e., TBN range, magnesium
amount, magnesium salicylate range, dithiocarbamate amount). The
evidence on pages 30 to 31 of the Specification includes Lubricant 2 with a
single data point for each range. Lubricant 1 includes the same data points
as provided in Lubricant 2, but Lubricant 1 has less aromatic amine anti-
oxidant (0.5 mass% versus 1.5 mass% Lubricant 2). No evidence is
proffered by Appellant for different data points within the ranges or even
data at the minimum and maximum extent of the ranges (Spec. 29–31). In
other words, based on the evidence it is not possible to derive a conclusion
that other embodiments falling within the claim will behave in the same
manner. Kao, 639 F.3d at 1068. Moreover, Appellant did not compare the
claimed composition with a composition as taught by Andoh, the closest
prior art. See, In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Andoh
teaches that the composition may include dithiocarbamate and a metal
(magnesium) salicylate (Andoh ¶¶ 15, 26-30, 37-39). Appellant’s lubricants
A to C do not include dithiocarbamate as an additive. Appellant has not
shown that the evidence considered as a whole would have favored a
conclusion of non-obviousness.
On this record, we affirm the Examiner’s § 103 rejection over Andoh.

Appeal 2019-006370
Application 14/190,151

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 7, 8,
10–12
103 Andoh 1–3, 5, 7,
8, 10–12

Overall
Outcome
1–3, 5, 7,
8, 10–12

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED