Infineum International Limited

Patent Trials and Appeals BoardMar 15, 2021

2020002524 (P.T.A.B. Mar. 15, 2021)

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. 14/800,791 07/16/2015 Raymond F. Watts 36372.4004 8143 34313 7590 03/15/2021 ORRICK, HERRINGTON & SUTCLIFFE LLP IP PROSECUTION DEPARTMENT 2050 Main Street, Suite 1100 IRVINE, CA 92614 EXAMINER OLADAPO, TAIWO ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 03/15/2021 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): IPPROSECUTION@ORRICK.COM vsantos@orrick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT AND TRIAL APPEAL BOARD ____________ Ex parte RAYMOND F. WATTS, KEITH R. GORDA, and HAHN SOO KIM ____________ Appeal 2020-002524 Application 14/800,791 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, DONNA M. PRAISS, and JOHN A. EVANS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from a final rejection of claims 1, 3–10, and 12–30. An oral hearing was held on November 19, 2020. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 In this Decision, we refer to the Specification filed July 16, 2015 (“Spec.”), the Final Office Action dated Mar. 22, 2019 (“Final Act.”), the Appeal Brief filed Sept. 30, 2019 (“Appeal Br.”), the Examiner’s Answer dated Dec. 11, 2019 (“Ans.”), the Reply Brief filed Feb. 11, 2020 (“Reply Br.”), and the Nov. 19, 2020 Hearing Transcript (“Tr.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Infineum International Limited as the real party in interest. Appeal Br. 1. Appeal 2020-002524 Application 14/800,791 2 Appellant’s invention is directed to a power transmission fluid composition with “significantly improved dynamic friction stability” to increase the fluid’s “useable friction life.” Spec. 3:30–32. Claims 1 and 10 are the independent claims on appeal directed to a vehicle transmission and a method for improving the dynamic friction performance of a wet clutch, respectively. Each independent claim comprises a power transmission fluid comprising an additive composition comprising, inter alia, a compound of structure (I). Claim 1 is illustrative of the subject matter on appeal and reproduced below from the Claims Appendix to the Appeal Brief (key limitation in dispute is italicized): 1. A vehicle transmission incorporating a wet clutch, said clutch being lubricated by a power transmission fluid comprising a major amount of a lubricating oil and a minor amount of an additive composition, said additive composition comprising: (i) a compound of structure (I): wherein a is an integer from 1 to 10 and R is a hydrocarbon group made by the metallocene-catalysed polymerisation of an alphaolefin feedstock, said feedstock being 1-octene, 1-decene, 1-dodecene or any mixture thereof; and (ii) a friction modifier of structure (II): Appeal 2020-002524 Application 14/800,791 3 wherein x + y is from 8 to 15, and z = 0 or an integer of from 1 to 5; and (iii) an oil-soluble phosphorus compound, wherein the lubricating oil is a Group III oil in an amount of from about 85 to about 88 mass percent relative to a total amount of the power transmission fluid, and wherein the compound of structure (I) and the friction modifier of structure (II) are together present in the power transmission fluid in an anti-shudder improving effective amount of from about 5 to about 7 mass percent of the power transmission fluid. Appeal Br. 13–14 (Claims Appendix). The Examiner’s rejection relies on the following prior art references: Name Reference Date Nibert US 5,840,663 Nov. 24, 1998 Robson US 6,060,437 May 9, 2000 Appellant requests review of the Examiner’s rejection of claims 1, 3–10, and 12–30 under 35 U.S.C. § 103 as unpatentable over Nibert in view of Robson.3 Appeal Br. 1. 3 The rejection of claims 1, 3–10, and 12–30 under 35 U.S.C. § 112(b) has been withdrawn by the Examiner following entry of Appellant’s amendment Appeal 2020-002524 Application 14/800,791 4 OPINION The dispositive issue for this appeal is: Has Appellant identified reversible error in the Examiner’s determination that the combination of Nibert and Robson would have suggested to one of ordinary skill in the art to use a metallocene catalyzed polyalphaolefin (“mPAO”) containing bisuccinimide in a transmission fluid as required by the subject matter of independent claim 1?4 After thorough review of the respective positions and evidence provided by Appellant and the Examiner, we answer in the negative and AFFIRM for the following reasons. The Examiner finds Nibert teaches a power transmission fluid comprising a friction modifier which meets claim 1’s limitation (ii) in an amount that overlaps the claimed range. Final Act. 4 (citing Nibert 2:10–52, 4:39–40). The Examiner finds Nibert also discloses a long chain hydrocarbyl compound which is an oil-soluble phosphorous compound as required by claim 1’s limitation (iii) and a dispersant comprising hydrocarbyl succinimide, however, the succinimides of claim 1’s formula (I) in limitation (i) are not particularly disclosed by Nibert. Id. at 5 (citing Nibert 5:39–67, 7:10–58). The Examiner determines it would have been obvious to a person having ordinary skill in the art to modify Nibert with Robson’s metallocene produced dispersant, specifically the bissuccinimide compounds prepared filed after the Final Office Action. Ans. 7; Advisory Action dated July 3, 2019. 4 We will limit our discussion to independent claim 1. Appellant has not argued the rejected claims separately. Appeal Br. 3–11. Accordingly, claims not argued separately will stand or fall together with independent claim 1, which we select as representative. See 37 C.F.R. § 41.37(c)(iv) (2019). Appeal 2020-002524 Application 14/800,791 5 from metallocene catalyzed polyalphaolefins which have the structure of claim 1’s formula (I), because Robson teaches the metallocene catalyzed polymers provide superior viscometric properties. Id. (citing Robson 3:15– 67, 7:30–50). The Examiner also finds that Nibert allows for the use of succinimide dispersants in the base oil and Robson teaches metallocene catalyzed polyalphaolefin succinimide dispersants were well known for use for lubricating oils. Ans. 8. Appellant argues that the Examiner erred because (1) the cited references do not teach the claimed invention, (2) the rationale for combining the teachings of Nibert and Robson is not adequate, and (3) unexpected results establish non-obviousness of the claim. Appeal Br. 4. Disclosure in the Cited Prior Art Regarding Robson’s disclosure of the claimed dispersant, Appellant does not dispute the Examiner’s finding that Robson teaches “ashless dispersants comprising imides of long chain hydrocarbon which are prepared from alphaolefin having from 3 to 20 carbon atoms and polymers prepared using metallocene catalyst chemistry.” Id. (quoting Final Act. 5). Instead, Appellant argues this is only one of many dispersant types disclosed in Robson and there are other different dispersants that Robson prefers. Id. Appellant’s argument that Robson’s disclosure is not limited to the specific dispersant recited in claim 1 is not persuasive of error because in a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). Appellant argues that Appeal 2020-002524 Application 14/800,791 6 claim 1 does not embrace mPAO-based dispersants made from feedstock that includes mixtures of polymers with chain lengths anywhere from 3 to 20 carbon atoms, because the claim is limited to “an mPAO-based dispersant formed from only ‘1-octene, 1-decene, [and] 1-dodecene’ feedstock.” Appeal Br. 5. There appears to be no dispute on this record that Robson’s disclosure of mPAO-based dispersants necessarily includes those formed from 1-octene, 1-decene, and 1-dodecene. Significantly, claim 1 does not exclude some amount of the mPAO- based dispersant disclosed in Robson which is formed from an alphaolefin feedstock having a shorter or longer chain length than the recited 1-octene, 1-decene, and 1-dodecence. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“the term ‘comprises’ permits the inclusion of other steps, elements, or materials”). Moreover, on this record, it is reasonable to find that Robson’s mPAO-based dispersant formed from feedstock having chain lengths from 3 to 20 carbon atoms would be useful as a dispersant in Appellant’s composition. Appellant does not contend otherwise. To the extent Appellant is arguing that the selection of 1-octene, 1- decene, 1-dodecene, and mixtures thereof for forming an mPAO-based dispersant would not have been obvious based on the number of options embraced by Robson’s teaching that the chain lengths may range from 3 to 20 carbon atoms, that argument is not persuasive of reversible error. See Merck, 874 F.2d at 807. We agree with the Examiner that Robson’s disclosure of C3 to C20 as useful for making homopolymers is sufficiently narrow to make single olefins such as C8 (1-octene), C10 (1-decene), or C12 (1-dodecene) recited in claim 1 apparent or obvious. Ans. 12. The record supports the Examiner’s finding that Robson teaches a class of ashless Appeal 2020-002524 Application 14/800,791 7 dispersants comprising alpha-olefin homo- and copolymers prepared using metallocene catalyst chemistry was known in the art for use as a dispersant. Robson 3:57–66, 4:16–18. Robson also characterizes this class of metallocene catalyzed polymers as preferred. Id. at 8:28–31. Rationale for Combining Prior Art Disclosures Appellant contends the Examiner’s stated rationale for combining Robson’s dispersants with Nibert’s power transmission fluid on the basis that Robson’s dispersants “provide superior viscometric properties” is not supported by the record. Appeal Br. 6. Appellant argues a person having ordinary skill in the art would not select dispersants based on visometric properties and the Examiner has not shown that Robson’s dispersants offer any improved dispersancy over the succinimide dispersants Nibert already employs. Id. Appellant also argues Robson does not state that all mPAO- based dispersants have “superior viscometric properties.” Id. According to Appellant, Robson identifies a sub-genus comprising ethylene alphaolefin copolymer having a high degree of terminal vinylidine unsaturation, thus, “at best, Robson teaches that other non-claimed ‘ashless dispersants’ could provide ‘superior viscomeric properties.’” Id. at 7. Appellant also argues that a person having ordinary skill in the art would not have combined Nibert and Robson because they are directed to different types of compositions that have functional and compositional differences. Id. at 7–8. According to Appellant, Nibert’s transmission fluid requires very exacting friction requirements while Robson’s crankcase lubricant has viscometric properties that “may differ from other dispersants.” Id. at 8. Appeal 2020-002524 Application 14/800,791 8 We are not persuaded by Appellant’s argument because the reason for modifying Nibert’s transmission fluid with Robson’s mPAO dispersant need not be the same reason as the inventor’s. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some [reason,] motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the reference be combined for the reasons contemplated by the inventor.”). Moreover, any need or problem for improving a prior art reference, such as the Examiner’s finding (Ans. 8) that a benefit associated with a dispersant would likewise serve a dispersant in a transmission fluid, can provide a rationale for combining teachings in the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). The Examiner’s analysis need not seek out precise teachings directed to the specific dispersants claim 1 recites, but can take account of inferences a person of ordinary skill in the art would employ, in this case, about the function of dispersants. KSR, 550 U.S. at 418. In this regard, the Examiner finds that Nibert allows for the use of succinimide dispersants in a base oil and Robson teaches that succinimide dispersants having the R-group prepared by metallocene catalysts were known for use in lubricating oils. An. 8–9. Thus, Nibert suggests the use of known succinimide dispersants for use in its transmission fluid. The Examiner also finds the use of the same succinimide ashless dispersants in both transmission and engine oils as Appeal 2020-002524 Application 14/800,791 9 evidenced by Kasai.5 Ans. 8 (citing Kasai Abstract, ¶¶ 1, 41). Kasai suggests the interchangeability of ashless dispersants in transmission oil and lubricating oil compositions. Kasai ¶ 1. Thus the rejection presented by the Examiner sets forth “the predictable use of prior art elements according to their established functions.” KSR, 550 US at 417. Unexpected Results Appellant’s objective evidence of non-obvious combines components (i) and (ii) of claim 1 and is asserted to show improved anti-shudder durability and fuel economy performance. Appeal Br. 9 (citing Spec. Tables 1, 2). According to Appellant, Fluid 1 and Fluid 2 show “significantly increased” anti-shudder durability compared to the Comparison fluid and the useful friction life of the fluids was approximately doubled. Id. (citing Spec. 15:5–7, Table 2). Appellant notes that Fluids 1 and 2 include 5.6% and 6.5% of claimed components (i) and (ii), respectively. Id. Appellant argues that “the claims are commensurate in scope with the testing data” and show a comparison between compositions with an mPAO compound and with traditional polyisobutenyl succinimide dispersants. Id. Appellant contends that “one of ordinary skill in the art would have every reason to believe that the same results reported in the specification for the tested examples would also be achieved in connection with the other claimed compositions.” Id. at 10. We agree with the Examiner’s determination that unexpected results with respect to claim 1 have not been adequately established. Ans. 9. Specifically, Appellant’s objective evidence is not commensurate in scope 5 US 2009/0082233, published Mar. 26, 2009. Appeal 2020-002524 Application 14/800,791 10 with the claim because Appellant only exemplifies decene while arguing that octane, decene, dodecene, or their mixtures are critical for providing improved properties over other alphaolefins encompassed by Robson’s C3– C20 olefins. Id. at 51; cf. Appeal Br. 5. It is well settled that Appellant has the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied upon by Appellant must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Appellant does not direct us to any evidence establishing that Fluid 1 and Fluid 2 identified by Appellant in the Appeal Brief are representative of the range of additive compositions encompassed by claim 1. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Evidence of secondary considerations must be reasonably commensurate with the scope of the claims.”). Appellant has not adequately explained why decene is representative of the entire range(s) claimed. The Examiner finds Appellant’s inventive examples require decene alone for preparing the polyalphaolefin (R-group). Ans. 18. In the Reply Brief, Appellant acknowledges that the sample fluids are limited to decene, but argues (1) a skilled artisan would understand the unexpected results would be exhibited Appeal 2020-002524 Application 14/800,791 11 by all the claimed compositions, (2) Appellant is not required to test every embodiment within the scope of the claims, and (3) the other side chain lengths “would not be expected to perform significantly differently” because they are plus and minus two carbon atoms in length. Reply Br. 10–11. At oral hearing, Appellant characterized the claim scope of component (i) as a “particular limited class of mPAO dispersants that produces this particular unexpected results” with the proviso “[w]e’re claiming this class of dispersants just with an extra carbon molecule or two extra carbon molecules.” Tr. 16:14–18. While Appellant’s objective evidence shows an improved property for a single compound embraced by claim 1’s component (i), the evidence in this Appeal record does not adequately support the claimed range of carbon sidechains. Appellant’s arguments to the contrary are not persuasive of reversible error because they are not supported by evidence. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Consequently, the evidence relied on by Appellant is not commensurate in scope with the subject matter of independent claim 1, which spans octane, decene, dodecene, and mixtures thereof. Appellant also does not explain why the “Comparison fluid” rather than one of the mPAO prepared compositions of Robson is the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). This is significant because Appellant asserts that Robson’s C3–C20 Appeal 2020-002524 Application 14/800,791 12 mPAO-based dispersants make up a “staggering larger” genus than the claimed octane, decene, dodecene, and mixtures thereof. Appeal Br. 5. The Examiner finds Appellant’s objective evidence does not demonstrate the criticality of the claimed octane, decene, dodecene, or their mixtures compared to known C3 to C20 olefins as R groups in the succinimide dispersant. Ans. 25. In the Reply Brief, Appellant argues that the Examiner’s position is nothing more than speculation that “very small changes in mPAO dispersant side chain length, molecular weight, and the relative amount of components (I) and (II) within the narrow claimed ranges would impact transmission fluid anti-shudder durability.” Reply Br. 12. Appellant indicates a willingness to “formally certify that one of ordinary skill in the art would have considered it reasonable to extrapolate the unexpected results achieved by the examples to the rest of the claimed range.” Id. Absent support for Appellant’s conclusory position that one mPAO dispersant side chain length is sufficient to represent the claimed range and establish criticality relative to known mPAO dispersants outside of the claimed range, Appellant’s objective evidence is entitled to little or no weight. Conclusion Having considered all of the evidence presented, on balance, the evidence of record weighs in favor of the Examiner’s conclusion of obviousness as to claim 1. Appellant does not present arguments in support of the separate patentability of any of claims 3–10 and 12–30. Therefore, the obviousness rejection of claims 1, 3–10, and 12–30 is sustained. Appeal 2020-002524 Application 14/800,791 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 3–10, 12– 30 103 Nibert, Robson 1, 3–10, 12– 30 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED