Ex Parte Devlin et al

Patent Trial and Appeal Board

Aug 23, 2013

12144010 (P.T.A.B. Aug. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent "nd Trademark Office
Addro,,: COMMISSIONER fOR PATENTS
P.o . Box 1450
Alcx.mdria. Virginia 223 13- 1(150
www.IISpIO.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONrlRMATION NO.
121144,010 06/23/2008 Mark T. Devlin 14 677-18 1673
45473 7590 08/29/2013
EXAMINER
BRINKS, HOFER, GILSON & LIONE
P.O. BOX 110285 OLADAPO, TA IWO
RESEARCH TRIANGLE PARK, NC 27709
ART UNIT PAPER NUM BER
177 1
MAIL DATE DELIVERY MODE
08/29/2013 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 MARK T. DEVLIN,
HELEN T. RYAN, and KATIE A. HUDSON
____________

Appeal 2012-003628
Application 12/144,010
Technology Center 1700
____________

Before HUBERT C. LORIN, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003628
Application 12/144,010
2
On August 31, 2011, the Examiner finally rejected claims 1, 3-6, 8-11,
13, 14, 17 and 19-21 of Application 12/144,010 under 35 U.S.C. § 103(a) as
obvious. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’010 application describes lubricant compositions that reduce
friction in slideways containing plastic components and/or sliding surfaces
to a greater extent than in slideways containing metal components and/or
sliding surfaces (App. Br. 9). Claim 1 is representative of the ’010
application’s claims and is reproduced below:
1. A slideway lubricating oil composition that exhibits a
coefficient of friction on a non-metal sliding surface that is
lower than a coefficient of friction on a metal sliding surface,
comprising:
a base oil;
a metal-free friction modifier selected from the group
consisting of glyoxalidines, glycerides, and combinations
thereof; and
a metal-free and sulfur-free, phosphorus containing anti-
wear/extreme pressure agent;
wherein the composition provides a lower coefficient of
friction for non-metal sliding surfaces than for metal
sliding surfaces, and wherein the lubricating oil

1 Afton Chemical Corp. is identified as the real party in interest (Second
Appeal Brief (“App. Br.”) 2 (Nov. 29, 2011)).
Appeal 2012-003628
Application 12/144,010
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composition is free of or essentially free of metal-
containing friction modifiers.
(App. Br. 14 (Claims App’x)).
REJECTIONS
On appeal, the Examiner, maintains the following rejections:
1. Claims 1, 3-6, 8-11, 14, 16, 17, and 19-21 are rejected under 35
U.S.C. § 103(a) as being obvious over Coates2 in view of Lawate3
(Ans. 4).
2. Claim 13 is rejected under 35 U.S.C. § 103(a) as being obvious
over Coates in view of Lawate and further in view of Henly4
(Ans. 8).
DISCUSSION
Rejection 1. Appellants present two arguments for reversal of
Rejection 1. In particular, Appellants argue that: (1) the Examiner has not
established a prima facie case of obviousness (App. Br. 9-12), (2) that the
Examiner improperly relied upon hindsight to choose glycerides from a list
of antioxidants described in Lawate (id.), and (3) that they have presented
evidence of unexpected results that, when weighed along with all of the
other evidence regarding obviousness, leads to a conclusion that the

2 U.S. Patent No. 5,824,628, issued Oct. 20, 1998.
3 U.S. Patent No. 5,773,391, issued June 30, 1998.
4 U.S. Patent Application Publication No. 2007/0293406 A1, published Dec.
20, 2007.
Appeal 2012-003628
Application 12/144,010
4
invention would not have been obvious to a person of ordinary skill in the
art (id. at 12). We address these arguments seriatim.
First, Appellants assert that the Examiner has not established a prima
facie case of obviousness because an adequate reason to combine the
teachings of Coates and Lawate has not been identified (App. Br. 9-12). An
obviousness rejection based upon a combination of references must include
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
Here, the Examiner found that Coates describes a slideway lubricant
composition comprising a base oil such as an ester of a polyhydric alcohol, a
phosphoric ester, and a phosphonate ester (Ans. 4). The Examiner also found
that Lawate describes the use of glyceride antioxidants to stabilize a
lubricating composition comprising an ester of a polyhydric alcohol (id. at
5). The Examiner therefore concluded that it would have been obvious to a
person of ordinary skill in the art to use Lawate’s glyceride antioxidant in
Coates’ slideway lubricant to stabilize the base oil (id.). Accordingly, the
Examiner shifted the burden to Appellants to prove that the slideway
lubricant described by the combination of Coates and Lawate did not have
the claimed friction-reducing properties for metal and plastic slideways (id.).
We conclude that the Examiner has articulated a reason for a person
of ordinary skill in the art to combine the descriptions of Coates and Lawate
that is supported by a rational underpinning. Accordingly, we are not
persuaded by this argument.
Second, Appellants argue that the prior art does not provide any
reason for the Examiner “to select a glyceride as the antioxidant over the
numerous other disclosed antioxidants, including the metal and sulfur
Appeal 2012-003628
Application 12/144,010
5
containing phosphorous antioxidants to combine with the lubricant
composition of [Coates]” (App. Br. 10).
We are not persuaded by this argument. Our reviewing court and its
predecessor have repeatedly held that the fact that an obviousness rejection
is based upon a selection from a list of possible compounds is not a ground
for reversal of the rejection. See Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference “discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985) (obviousness rejection of claims affirmed in light of prior art teaching
that “hydrated zeolites will work” in detergent formulations, even though
“the inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the disclosure of the prior art was “huge, but it
undeniably include[d] at least some of the compounds recited in appellant’s
generic claims and [was] of a class of chemicals to be used for the same
purpose as appellant’s additives”).
Third, Appellants argue that “even if a prima facie case of
obviousness were established, any presumption of obviousness is rebutted
and overcome by the surprising and unexpected benefits exhibited by the
claimed composition” (App. Br. 12). Appellants do not cite any evidence of
the alleged surprising and unexpected results in their Appeal Brief. In their
Reply Brief, however, Appellants argue that paragraph [0040] of the
specification constitutes their evidence (Reply Br. 2).
We are not persuaded by Appellants’ argument regarding the alleged
unexpected results provided by the claimed composition. As has been
explained:
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Application 12/144,010
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In order for a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the applicant to at
least establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the
prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972);
and (2) that the difference actually obtained would not have
been expected by one skilled in the art at the time of invention,
id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971).
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
Paragraph [0040] of Appellants’ Specification establishes neither that
there is a difference between the prior art and the claimed compositions nor
that a person of ordinary skill in the art would have found any such
difference to be unexpected. Paragraph [0040] reads, in its entirety:
It is expected that a lubricant composition containing an
amine-containing metal-free friction modifier and a metal- and
sulfur-free phosphorus compound will provide superior
boundary friction characteristics on plastic materials.
Spec. ¶ [0040].
Appellants, therefore, have failed to identify any evidence of
unexpected results in their brief. Because Appellants have an obligation to
cite the evidence upon which they rely, 37 C.F.R. § 41.37(c)(1)(vii)
(requiring Appellants to identify the “parts of the record relied upon” as part
of their appeal brief), we need not further review the record for evidence in
support of Appellants’ contention. See also Gross v. Town of Cicero, Ill.,
619 F.3d 697, 702 (7th Cir. 2010) (“Judges are not like pigs, hunting for
truffles buried in the record.”).
For the foregoing reasons, we are not persuaded that the Examiner
erred in rejecting claims 1, 3-6, 8-11, 14, 16, 17, and 19-21 as obvious over
the combination of Coates and Lawate.
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Application 12/144,010
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Rejection 2. Appellants advance a single argument for reversal of the
rejection of claim 13 as obvious in view of the combination of Coates,
Lawate, and Henly:
Claim 13 was rejected as being unpatentable over [Coates] in
view of [Lawate] and further in view of U.S. Publication No.
2007/0293406 to Henly et al. However, the ’406 publication is
not prior art as the ’406 publication was published on
December 20, 2007, less than one year before the filing date of
the present application and the ’406 publication and this
application are commonly owned and were subject to
assignment to the same assignee at the time the invention of the
present application was made. Accordingly, the rejection of
claim 13 should be withdrawn.
(App. Br. 13).
The Examiner replies that the inventive entities of Henly and the ’010
application are different and that Henly qualifies as prior art under 35 U.S.C.
§ 102(a)5 (Ans. 10-11).
Appellants do not respond the Examiner’s findings and argument (see
generally Reply Br.).
We discern no error in the Examiner’s finding that Henly qualified as
prior art under 35 U.S.C. § 102(a). Accordingly, we affirm the Examiner’s
rejection of claim 13.

5 The Examiner’s Answer was filed on December 20, 2011, which is before
the effective date for the America Invents Act (“AIA”), which substantially
amended 35 U.S.C. § 102. We assume that the Examiner was citing the pre-
AIA version of § 102. We also will cite the pre-AIA versions of § 102 and
§ 103 and express no opinion regarding the potential application of the AIA-
amended versions of § 102 and § 103.
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Application 12/144,010
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CONCLUSION
We have affirmed the Examiner’s rejections of claims 1, 3-6, 8-11,
13, 14, 17 and 19-21 of the ’010 application.

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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