Afton Chemical Corporation

Patent Trials and Appeals Board

Feb 1, 2022

2021001557 (P.T.A.B. Feb. 1, 2022)

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. 15/613,696 06/05/2017 Kristin Fletcher AFTON-1638US 5422 22186 7590 02/01/2022 MENDELSOHN DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 910 PHILADELPHIA, PA 19102 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): docketing@mendelip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISTIN FLETCHER, PAUL RANSOM, and GUILLAUME CARPENTIER Appeal 2021-001557 Application 15/613,696 Technology Center 1700 Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 2, 6-9, 11, 12, 14-17, and 19. An 1 In this Decision, we refer to the Specification filed June 5, 2017 (“Spec.”); the Final Office Action dated February 25, 2020 (“Final Act.”); the Appeal Brief filed August 25, 2020 (“Appeal Br.”); the Examiner’s Answer dated October 28, 2020 (“Ans.”), and the Reply Brief filed December 28, 2020 (“Reply Br.”). 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Afton Chemical Corporation. (Appeal Br. 1.) Appeal 2021-001557 Application 15/613,696 2 oral hearing was held on September 28, 2021, a transcript of which is of record (hereinafter cited as “Tr.”). We have jurisdiction under 35 U.S.C. § 6(b). DECISION ON REQUEST FOR REHEARING This is in response to a Request, filed December 28, 2021, (“Request” or “Req. Reh’g”) for rehearing of our Decision dated October 29, 2021(“original Decision” or “Dec.”), in which we affirmed the Primary Examiner’s final decision to reject claims 1, 2, 6-9, 11, 12, 14-17, and 19. We decline to modify our original Decision in any substantive respect for the reasons given in our original Decision and below. 37 C.F.R. § 41.52(a) (2018). A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. See 37 C.F.R. § 41.52(a)(1). Also, a request for rehearing is not an opportunity to merely express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. The proper course for an Applicant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. Appellant seeks a rehearing arguing the Board has misapprehended Applicant's position in the Appeal Brief and the Reply Brief. Req. Reh’g. 2. Although we consider Appellant’s Request to amount to no more than an improper expression of dissatisfaction with a Board Decision, rather than an appropriate identification of points believed to have been misapprehended Appeal 2021-001557 Application 15/613,696 3 or overlooked, we address the specifics of the alleged errors as follows. In particular, contrary to Appellant’s arguments, Appellant essentially repeats the argument from the principal Brief that the genus of Mosier is extraordinarily large in size relative to the small size of the claimed subgenus. Compare Req. Reh’g. 2-3 with Appeal Br. 16-17. The issue regarding the scope of the teachings of Mosier and the claimed species was specifically addressed in the Decision and by the Examiner. Decision 7-8; Ans. 9-11. Mosier discloses the composition comprising calcium and magnesium detergents in amounts wherein the ratio of calcium to magnesium ranges from 1:1 to 1:3 as a separately distinct embodiment. Mosier ¶ 60. Appellant’s characterization of Mosier’s genus is not limited to this express disclosure. Appellant argues the Board mischaracterized Appellant’s reliance on Comparative Example A as the basis from which to demonstrate unexpected results by the claimed compositions. Req. Reh’g. 3-6. Appellant contends Comparative Example A falls within the scope of the compositions Mosier teaches because it does not include a ratio of calcium to magnesium value within the claimed range of 1:1 to 1:3. Appeal Br. 9-10; Spec. ¶¶ 168, 172 (Table 3). Appellant relies on this comparative example to establish that compositions within the scope of Mosier’s teachings do not necessarily result in the claimed resistance to timing chain stretch. Req. Reh’g. 4; Appeal Br. 9-10. However, Appellant fails to explain why the single Comparative Example A is sufficient evidence to establish that each of Mosier’s distinctly disclosed embodiments would have not resulted in reducing timing chain stretch. See Dec. 10. As we stated in our Decision, Appellant has not explained adequately why the exhibited reduction in Appeal 2021-001557 Application 15/613,696 4 timing chain stretch would have been recognized by a person skilled in the art to have been unexpected. Dec. 11. Appellant argues “the Board appears to arbitrarily put a larger burden on Appellant than is required to prove that the claimed CaSulf/Ca+Mg weight ratio is a result effective variable for reducing timing chain stretch.” Req. Reh’g. 6. This argument is a mischaracterization of the record presented on appeal. As stated in the decision: We note that Appellant asserts that the prior art does not recognize the CaSulf/Ca+Mg ratio as a result effective variable for reducing timing chain stretch in an engine. Appeal Br. 5. Instead, Appellant contends the present inventors found this ratio to be a result effective variable for reducing timing chain stretch. Id. For clarity purposes, our discussion of “result effective variable” is within the context of Appellant’s assertion with respect to identifying the CaSulf/Ca+Mg ratio as a result effective variable. Decision 4, fn. 3. Emphasis added. The Decision indicates the showing relied upon by Appellant lack a factual basis sufficient to support the assertion that “the present inventors found this ratio to be a result effective variable for reducing timing chain stretch.” Id. Accordingly, Appellant’s arguments in the Request for Rehearing lack persuasive merit. Therefore, Appellant has not established that our Decision misapprehended or overlooked any particular point of law or fact that would require a different outcome. Thus, we decline to modify our decision to affirm the Examiner’s § 103 rejections of the appealed claims. CONCLUSION The Request for Rehearing is denied. Appeal 2021-001557 Application 15/613,696 5 DECISION Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2, 6-9, 11, 12, 14-17, 19 103 Mosier, Esche 1, 2, 6-9, 11, 12, 14-17, 19 Overall Outcome 1, 2, 6-9, 11, 12, 14-17, 19 FINAL OUTCOME OF APPEAL AFTER REHEARING Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6-9, 11, 12, 14-17, 19 103 Mosier, Esche 1, 2, 6-9, 11, 12, 14-17, 19 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. § 1.136(a)(1)(iv). DENIED