Ex Parte Duyck et al

Board of Patent Appeals and Interferences

Feb 17, 2009

10825065 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KARL J. DUYCK, THEODORE E. NALESNIK,
JOHN R. BARANSKI, CYRIL A. MIGDAL,
and REBECCA R. SEIBERT
____________

Appeal 2008-5105
Application 10/825,065
Technology Center 1700
____________

Decided:1 February 17, 2009
____________

Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s refusal to allow claims 1, 5-9, 11-19, and 22. We have

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/825,065

jurisdiction pursuant to 35 U.S.C. § 6. Oral arguments were presented on
December 09, 2008.
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a composition comprising
a lubricant and a mixture of additives, which additives are said to be anti-
oxidants; that is, they have anti-oxidative functionality. The anti-oxidant
additive mixture includes at least one acridan of a specified formula and a
residual diphenylamine, i.e., an alkylated diphenylamine of a type that could
be used in preparing Appellants’ acridan component via a partial
condensation reaction with ketone or aldehyde. Appellants also claim a
method of making the lubricant composition including a lubricant and an
anti-oxidation additive mixture of acridan and residual. Claim 1 is
illustrative and reproduced below:

1. A composition comprising:

A) a lubricant; and

B) a mixture of antioxidants, wherein said mixture is prepared by the
partial condensation of an alkylated diphenylamine selected from the group
consisting of mono-, di-, and tri-nonylated diphenylamine and butylated
octylated diphenylamine with an aldehyde or ketone in the presence of an
acidic catalyst to yield at least one acridan of the general formula:

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along with residual alkylated diphenylamine remaining after said partial
condensation;

wherein:
R1, R2, R3, and R4 are independently selected from the group consisting of
hydrogen, butyl, octyl, and nonyl, provided that at least one of R1, Rz, R3, and
R4 is not hydrogen, and R5 and R6 are independently selected from the group
consisting of C1 to C20 hydrocarbyl and hydrogen;
wherein, at the termination of said condensation, residual alkylated
diphenylamine is not separated from the acridan product and remains in said
mixture of antioxidants with said acridan.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Wheeler 5,268,394 Dec. 7, 1993
Downs 5,310,491 May 10, 1994
Deetman US RE37,101 Mar. 20, 2001

The Examiner maintains the following rejection:
Claims 1, 5-9, 11-19, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wheeler in view of Deetman and Downs.
At the outset, we note that Appellants do not present separate
argument that is reasonably specific to the individual claims on appeal in the
opening Appeal Brief. Thus, the appeal was brought on a basis such that
commonly rejected claims 1, 5-9, 11-19, and 22 are considered as standing
or falling together. Accordingly, we select claim 1 as the representative
claim on which we shall focus in deciding this appeal.2

2 While claim 1 is drawn to a product lubricant that has a somewhat
narrower acridan formula requirement than that required by independent
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All arguments not timely raised in the principal Appeal Brief are
considered waived. 37 C.F.R. § 41.37(c)(1)(vii). See also Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n. 3
(Fed. Cir. 2005). In this regard, Appellants' arguments, as appear only in the
Reply Brief, are untimely and will not be considered.
Appellants contend that Wheeler only teaches using acridans that have
been separated from any diphenylamine employed in their production as a
component acridan of their lubricant additives including, inter alia,
diphenylamine and acridan (App. Br. 10). Hence, Appellants assert that
Wheeler “fails to disclose or suggest the economically desirable benefit of
[their] invention, i.e., the ability to omit the separation step of the newly
formed acridan and the residual alkylated diphenyl amine” (App. Br. 11).
In other words, Appellants maintain that Wheeler would have only
suggested the use of an acridan that is separated from any non-reacted
diphenylamine as part of a lubricant composition to one of ordinary skill in
the art at the time of the invention.
ISSUE
Have Appellants identified reversible error in the Examiner’s
obviousness rejection over the applied prior art by the above-noted
assertions respecting the claimed product-by-process limitation, as more
fully presented in the Appeal Brief?
process claims 11 and 22, the issues presented are substantially the same for
the process claims and the product claims given the common arguments
presented by Appellants in the Appeal Brief and for reasons evinced by the
Appeal record before us. In this regard, the process claims define the
composition of an added antioxidant mixture via a product-by-process
limitation.
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SUMMARY DISPOSITION
We answer this question in the negative for reasons set forth in the
Examiner’s Answer and as further explained below. Therefore, we affirm
the Examiner’s obviousness rejection.

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-986
(Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim is obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. Teleflex, Inc., 127 S.
Ct. 1727, 1741 (2007). See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
the art does not give rise to reversible error ‘where the prior art itself reflects
an appropriate level and [the] need for testimony is not shown’”).
“The person of ordinary skill [in the art] is a hypothetical person who
is presumed to [know the relevant] prior art. Custom Accessories, Inc. v.
Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).
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“[A] reasonable expectation of success, not absolute predictability”
supports a conclusion of obviousness. In re Longi, 759 F.2d 887, 897 (Fed.
Cir. 1985). Therefore, an obviousness rejection predicated on selection of
one or more components from numerous possible choices may be
appropriate if the prior art provides direction as to which of many possible
choices is likely to be successful. See PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007); In re Arkley, 455 F.2d
586, 587-88 (CCPA 1972) (noting that “picking and choosing may be
entirely proper in the making of a 103, obviousness rejection, where the
applicant must be afforded an opportunity to rebut with objective evidence
any inference of obviousness which may arise from the similarity of the
subject matter which he claims to the prior art”). Moreover, the fact that a
reference “discloses a multitude of effective combinations does not render
any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft
Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citing 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”)); see also, 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”).
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During examination, claims terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007).
The method of claiming a product by listing the steps to obtain it,
commonly called a product-by-process claim, is perfectly acceptable and
does not inherently conflict with the second paragraph of 35 U.S.C. §112, so
long as the claims particularly point out and distinctly claim the product for
which protection is sought. In re Brown, 459 F.2d 531, 535 (CCPA 1972).
However, patentability is determined by the product itself, and does
not depend on the method of production. In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).

FINDINGS OF FACT AND ANALYSIS
Appellants acknowledge that the reaction products of an aliphatic
ketone (such as acetone), and a diarylamine, such as diphenyl amine
(ADPA), comprise known antioxidants (Specification 1-3). Moreover,
Appellants acknowledge that “[i]t is known from U.S. Patent No. 5,268,394
[Wheeler] that acridans can be used as lubricating additives. This patent
also discloses combining the acridans with certain amine stabilizers,
phenolic stabilizers, and phosphite stabilizers” (Specification 9). Also, see
App. Br. 10 and Spec. 3-4.
Further concerning these acknowledged facts by Appellants, the
Examiner has likewise found that Wheeler discloses or suggests that the
acridan component of their lubricant composition includes an alkylated
acridan including compounds of a structural formula that are embraced by
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the acridan component required by representative claim 1 (Ans. 3; Wheeler;
col. 3, ll. 1-15 and 62-65; col. 2, ll. 17-66). Also, the Examiner has found
that Wheeler discloses the use of diphenyl amine compounds together with
acridan as additive components of a lubricant composition (Ans. 3; Wheeler;
col. 3, ll. 15-61). As evident by a review of structure II of Wheeler, the
amine stabilizer co-additive component disclosure of Wheeler is inclusive of
alkylated amines that correspond to the alkylated amine component required
by representative claim 1. Appellants have not argued otherwise in their
opening Appeal Brief.
In addition, we find that Wheeler discloses NAUGALUBE™ 640 and
NAUGARD™ PS-30 (butylated octylated diphenylamine antioxidant) as
two of several highlighted commercially available amine anti-oxidants that
can be used in forming a combination acridan and amine stabilizer additive
(col. 4, ll. 17-30). Wheeler’s acridan structure I is inclusive of alkyl groups
(including methyl, butyl, and octyl or C1-C3) groups and is disclosed as
being synthesized from the reaction of a ketone and dialkylated diphenyl
amine (Wheeler; col. 3, ll. 15 and col. 4, ll. 55-66).
Appellants’ Specification identifies the aforementioned
NAUGALUBE™ 640 employed by Wheeler as a known commercial
product comprising butylated (30%) octylated (24%) diphenylamine
(Specification 19). NAUGALUBE™ 640 is a preferred diphenylamine
antioxidant useful in preparing an acridan and diphenylamine additive
(Additive B) according to Applicants’ invention (Specification 19, 26-27).
Moreover, the Examiner relies on Deetman for its disclosure of an
alkyl substituted diphenylamine (Irganox® L57; Ciba- Geigy) as a known
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commercially available prior art lubricant antioxidant additive (Ans. 4;
Deetman; col. 9, l. 55 - col. 10, l. 18).
Downs discloses that Irganox® L57 “is a mixture of butylated and
octylated diphenylamines” (col. 5, ll. 58-61).
As evident from the reproduction above, representative claim 1
specifies butylated octylated diphenylamine as one of several diphenylamine
compounds embraced by the claimed product composition as a part thereof
(residual diphenylamine). While not limited thereto, representative claim 1
covers compositions comprising an alkylated acridan component product
that could be made using butylated octylated diphenylamine as one of the
reactants for synthesizing an acridan component for the claimed lubricant
composition product together with residual butylated octylated
diphenylamine.
Wheeler discloses that acridans yield “increased performance in
systems where simply increasing antioxidant levels shows little or no
increase in performance” (col. 4, ll. 35-37). Also, Wheeler does not identify
any detriment to the selection of any particular acridan and any particular
alkyl diphenylamine component for use together from among those
components that are embraced by Wheeler’s disclosure of these lubricant
additive components.
Given the above, we find that Wheeler alone or in combination with
Deetman and Downs would have suggested to one of ordinary skill in the art
a lubricant composition including a stabilizing anti-oxidant additive
combination including an alkyl diphenylamine and an acridan selected from
among those disclosed as useful by Wheeler. One of ordinary skill in the art
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would have been reasonably led to select a lubricant composition that
includes an acridan and an alkyl diphenylamine within the scope of
representative claim 1 particularly given the identification of available
commercial sources for an alkyl diphenylamine within the scope of the
requirements of representative claim 1 for that component by Wheeler.
Moreover and while not essential to the Examiner’s prima facie
obvious determination given the product-by-process format of representative
claim 1 and the limited argument presented in the opening Appeal Brief, we
have little doubt that one of ordinary skill in the art would have readily
recognized that the commercial sources for alkyl diphenylamine components
disclosed by Wheeler would have been available as sources of alkyl
diphenylamine that would be expected to be useful for synthesis of an
acridan in accordance with structure I of Wheeler. This is so given the
acridan synthesis disclosure of Wheeler in combination with the acridan
structural blueprint of Wheeler, and the level of skill in the art represented
by the prior art of record, including Appellants’ admissions in the
Specification. Such an acridan product, whether made by the method of
Wheeler or another art recognized route, would have been a ready source of
acridan for employment together with alkyl diphenylamine of the same or
another type as part or all of a combined lubricant additive mixture in
accordance with the teachings of Wheeler.
Appellants basically argue that Wheeler does not suggest what
Appellants assert as the “gist of the present invention”; that is, that acridan
separation from the diphenylamine employed in their production “is
unnecessary” and not suggested by Wheeler (App. Br. 10-11). In addition to
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other reasons furnished by the Examiner in the Examiner’s Answer and as
would have been apparent to an ordinarily skilled artisan upon a fair reading
of the teachings of the applied references, this argument is not persuasive
foremost because representative claim 1 specifies a product using a product-
by process limitation3. Hence, representative claim 1 is not drawn to a
process for producing acridan with a process proviso that at least some
excess reactant diphenylamine is not separated from the acridan product
together with the use of the non-separated combination as a lubricant
additive mixture. When the claim does not recite allegedly distinguishable
features, Appellants cannot rely on them to establish patentability. See In re
Self, 671 F.2d 1344, 1350-1351 (1982).
As a final point, we note that Appellants have not presented argument
supported by evidence, such as evidence of unexpected results
commensurate in scope with the claimed subject matter that serves to refute
the prima facie case of obviousness presented by the Examiner.
CONCLUSION
On this appeal record, Appellants have not identified reversible error
in the Examiner’s obviousness rejection of representative claim 1 over the
applied prior art based on the arguments submitted asserting Wheeler would
have only suggested the use of an acridan that is separated from any non-
reacted diphenylamine as part of a lubricant composition; that is, an alleged

3 Similarly, a lubricant additive mixture limitation specified in each of
claims 11 and 22 is a product made by a process (product by process)
limitation: that is, the process of making the lubricant additive describes the
additive of claims 11 and 21 and is not a separate process limitation that is
part of an over-all process of making the lubricant mixture recited in claim
11.
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lack of teaching or suggestion of an acridan synthesis method limitation
(elimination of a separation step) because the claimed subject matter, as
properly construed, is not so limited.

ORDER
The decision of the Examiner to reject claims 1, 5-9, 11-19, and 22
under 35 U.S.C. § 103(a) as being unpatentable over Wheeler in view of
Deetman and Downs 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)(1)(iv) .

AFFIRMED

PL Initial:
sld

MICHAEL P. DILWORTH
CROMPTON CORPORATION
BENSON ROAD
MIDDLEBURY, CT 06749
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