Ex Parte Lagona

Patent Trials and Appeals Board

Mar 26, 2019

15210502 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/210,502 07/14/2016
23370 7590 03/28/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
Jason Lagana
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
060691-0960816 6568
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON LAGONA
Appeal2018-006319
Application 15/210,502
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims
1-30. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention is directed to lubricating oil compositions and
methods of controlling the formation of soot and/or sludge from engine oil
exhaust (Spec. 1: 17-24). According to the Specification, the described
lubricating oil compositions prevent clogging from soot and/or sludge build
1 Appellant identifies Afton Chemical Corp. as the real party in interest
(Appeal Br. 3).
Appeal2018-006319
Application 15/210,502
up in an engine's components, such as oil mist separators, crankcase, and
drainage channels (id.).
Claim 1 is illustrative ( emphasis added):
1. A lubricating oil composition, comprising:
a major amount of an oil of lubricating viscosity;
an amine-functionalized olefin copolymer dispersant
viscosity index improver comprising a reaction product of an
acylated olefin copolymer and a polyamine in an amount of
from about 1.5 wt. % to about 2.0 wt. % based on the weight of
the lubricating oil composition; and
a dispersant comprising a reaction product of
components (A) a hydrocarbyl-dicarboxylic acid or anhydride
having a number average molecular weight of from about 500
to about 5000 and (B) at least one polyamine, wherein the
reaction product is post-treated with (C) an aromatic carboxylic
acid, an aromatic polycarboxylic acid, or an aromatic
anhydride, wherein all carboxylic acid or anhydride groups are
attached directly to an aromatic ring, and/or (D) a non-aromatic
dicarboxylic acid or anhydride having a number average
molecular weight of less than about 500, wherein the dispersant
is present in an amount of from about 4 wt. % to about 5.5 wt.
%.
Appeal Br. 21 (Claims App.).
Appellant appeals the following rejections:
I. Claims 1-30 are rejected under 35 U.S.C. § 103 as unpatentable
over Goldblatt et al. (US 2008/0293600 Al; published Nov. 27, 2008,
"Goldblatt") in view of Mathur et al. (US 8,927,469 B2; issued Jan. 6,
2015, "Mathur").
II. Claims 1-30 are rejected under 35 U.S.C. § 103 as unpatentable
over Mishra et al. (US 2004/0259742 Al; published Dec. 23, 2004,
"Mishra") in view of Mathur.
2
Appeal2018-006319
Application 15/210,502
Appellant does not argue any of the dependent claims separately
(Appeal Br. 7-19; Reply Br. 2-5). We select independent claim 1 as
representative. Because no dependent claims are argued separately, the
dependent claims will stand or fall with our analysis of the rejections of
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
FINDINGS OF FACT & ANALYSIS
Rejection I.
The Examiner's findings and conclusions regarding Goldblatt and
Mathur are located on pages 3-5 of the Final Action dated March 15, 2017
and pages 2--4 of the Answer dated April 2, 2018.
The Examiner finds that Goldblatt discloses a lubricating oil
composition containing graft polymers, which suggest the claimed
dispersant viscosity index improver element (Final Act. 3 ( citing Goldblatt
,r,r 2, 34, 39, 42, 47)). The Examiner further finds that Goldblatt is silent
with respect to the specific dispersant comprising a reaction product of
components (A}-(D) recited in claim 1 (Final Act. 4).
The Examiner, however, finds that Mathur discloses "a dispersant
which is the reaction product of (A) a hydrocarbyl-dicarboxylic acid or
anhydride, (B) a polyamine, (C) a dicarboxyl-containing fused aromatic
compound including 1,8-naphthalic anhydride, and (D) a non-aromatic
dicarboxylic acid or anhydride" (id. (citing Mathur 5:61---67)). The
Examiner further finds that Mathur' s composition is used to improve a
lubricant's capability to handle soot or sludge within an engine (Final Act. 4;
see Mathur Abstract). The Examiner determined that it would have been
obvious for the ordinarily skilled artisan to have added Mathur's
3
Appeal2018-006319
Application 15/210,502
functionalized dispersant additive to Goldblatt's lubricating oil compositions
"to improve the soot or sludge handling characteristics of an internal
combustion engine" (Final Act. 5).
Appellant argues that the Examiner has not established a motivation to
combine the teachings of Goldblatt and Mathur (Appeal Br. 9-11 ).
We are not persuaded by Appellant's argument. As the Examiner
found, Goldblatt discloses that dispersants, such as the one described in
Mathur, "help suspend insoluble engine oil oxidation products[,] thus
preventing sludge flocculation and precipitation or deposition of particulates
on metal parts" (Ans. 6 ( citing Goldblatt ,r 289); see also Mathur Abstract).
We, therefore, agree with the Examiner that Goldblatt provides sufficient
motivation for one of ordinary skill in the art to add Mathur' s dispersant to
Goldblatt' s lubricating oil composition with the expectation that doing so
would have helped maintain engine cleanliness (see Ans. 6).
Appellant argues that the combination of Goldblatt and Mathur would
have failed to provide one of ordinary skill in the art a reasonable
expectation of success (Appeal Br. 11-13). In particular, Appellant argues
that the range of Goldblatt's graft polymers in an amount of from about
0.02 wt.% to about 10 wt.% "is considerably broader than the range" of
dispersant viscosity index improver in an amount of from about 1.5 wt. % to
about 2.0 wt.% recited in claim 1 (id. at 10 (citing Goldblatt ,r 276)).
Likewise, Appellant argues that Mathur' s range of functionalized
dispersant in an amount of from about 0.5 wt.% to about 10.0 wt.% is
similarly broad (Appeal Br. 12 (citing Mathur 7:65----67)). Appellant further
argues that Goldblatt teaches that such a dispersant is optional, but may be
"included in any amount up to 15 % by weight" (Appeal Br. 12 (citing
4
Appeal2018-006319
Application 15/210,502
Goldblatt ,r 278)). Appellant asserts that the applied prior art's broad ranges
for the graft polymers and dispersant thus "provide[] one of skill in the art
with infinite possibilities" and, consequently, "one of skill in the art would
not have been able to predict that the subrange of 1.5 wt. % to 2.0 wt. % for
the dispersant viscosity index improver and []the presence of the claimed
dispersant is required" ( Appeal Br. 12).
As the Examiner found, however, Goldblatt's lubricating oil
composition teaches or suggests a dispersant viscosity index improver in a
preferred amount of 0.25% to about 2% by wt. (Final Act. 3--4 ( citing
Goldblatt ,r 276)), which overlaps and encompasses the range of this
component recited in claim 1. We further note that Mathur's dispersant in
an amount of from about 0.5 wt.% to about 10.0 wt.% (Mathur 7:65-67)
similarly overlaps the range of this component recited in claim 1. The
overlapping ranges of these components are sufficient to have rendered the
claimed subject matter obvious. See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) (holding that a prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art).
When the Examiner establishes a prima facie case of obviousness,
"[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole." In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) ( en bane). Thus, "the burden of showing unexpected results rests
on [the party] who asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). For the reasons below, Appellant has not met his burden of showing
unexpected results.
5
Appeal2018-006319
Application 15/210,502
Appellant argues that the Specification's Examples demonstrate
unexpected control of soot concentration and sludge formation and, thus,
rebuts any established prima facie case of obviousness (Appeal Br. 13-15).
In particular, Appellant argues that Examples 2 and 4, which contain at least
1. 5 wt. % of the dispersant viscosity index improver in combination with a
functionalized dispersant, passed the soot induced viscosity index control
test (id. at 13; see Spec. 45-50, Table 3). Appellant further argues that
Examples 5, 5', 6, 6', 7, and 7' demonstrate that lubricating oils containing
between 1.5 wt.% and 2.0 wt.% of the dispersant viscosity index improver
in combination with a functionalized dispersant are necessary to pass both
the soot induced viscosity index control test and the sludge build-up test (id.
at 13-14; see Spec. 50-54, Tables 5, 6).
We, however, agree with the Examiner that these results are not
probative evidence of unexpected results (Ans. 6-8). For example,
Appellant has not demonstrated criticality of the claimed range because
Example 2, which contains an amount of 3 .0 wt. % dispersant viscosity
index improver in excess of the claimed amount, passed the soot induced
viscosity index control test (id. at 7). The proffered Examples, moreover, do
not include a comparison of the claimed composition to the closest prior art.
Goldblatt, furthermore, discloses suitable ranges of dispersant viscosity
index improver amounts that encompass the 1.8 wt. % amount Appellant
added to the exemplified engine lubricating oil compositions (see Goldblatt
,r 276; Spec. Tables 5, 6). 2 Therefore, Appellant's results do not rebut the
Examiner's established prima facie case of obviousness.
2 Appellant directs our attention to Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (2006) to support his argument that the prior art's temperature
6
Appeal2018-006319
Application 15/210,502
Rejection II.
The Examiner's findings and conclusions regarding Mishra and
Mathur are located on pages 6-8 of the Final Action dated March 15, 2017
and pages 8-10 of the Answer dated April 2, 2018.
The Examiner finds that Mishra discloses "the use of olefin co-
polymer dispersant viscosity index improvers in lubricating oil compositions
for exhaust gas recirculation engines where the additive functions to reduce
or eliminate oil thickening and sludge formation ... in an amount of about 2
wt.% to about 18 wt.%" (Final Act. 6-7 (citing Mishra ,r 44)). The
Examiner further finds that Mishra is silent with respect to the specific
dispersant comprising a reaction product of components (A}-(D) recited in
claim 1 (Final Act. 7-8).
As set forth above in rejection I, the Examiner finds that Mathur
discloses the specific dispersant element missing from Mishra and that
Mathur's dispersant is used to improve a lubricant's capability to handle soot
or sludge within an engine (Final Act. 4, 8 (citing Mathur 5:61---67); see
Mathur Abstract).
Appellant argues that the Examiner has not established a motivation to
combine the teachings of Mishra and Mathur (Appeal Br. 16-18).
Appellant's argument is not persuasive. As the Examiner determined,
the ordinarily skilled artisan would have added Mathur's functionalized
dispersant additive to Mishra's lubricating oil compositions "to improve the
range cannot represent a specific disclosure of the endpoints of the claimed
range (Reply Br. 3--4). Atofina 's holding, however, is not dispositive-at
issue in Atofina was whether a prior art range anticipated the claim at issue,
not whether the whether the prior art range rendered the claimed range
obvious. Atofina, 441 F.3d at 998-1000.
7
Appeal2018-006319
Application 15/210,502
soot or sludge handling characteristics of an internal combustion engine"
(Final Act. 8).
Appellant argues that the combination of Mishra and Mathur would
have failed to provide one of ordinary skill in the art a reasonable
expectation of success (Appeal Br. 18-19). In particular, Appellant argues
that "the broad, largely non-overlapping range for the dispersant viscosity
index improvers described in Mishra, along with the broad range for the
functionalized dispersant as described in Mathur, provides one of skill in the
art with infinite possibilities" (id. at 19).
As the Examiner found, however, Mishra's lubricating oil
composition teaches or suggests a dispersant viscosity index improver in an
amount of about 2 wt. % to about 18 wt. % (Final Act. 6-7 ( citing Mishra
,r 44))3 (emphasis added), which overlaps the range of this component
recited in claim 1. As set forth above in rejection I, Mathur's dispersant
amount similarly overlaps the range of this component recited in claim 1.
Therefore, the overlapping ranges of these components is sufficient to have
rendered the claimed subject matter obvious. See Peterson, 315 F.3d at
1329.
On these facts, the Examiner has established a prima facie case of
obviousness, which shifts the burden to Appellant of showing probative
rebuttal evidence of unexpected results. See Dillon, 919 F.2d at 696;
3 We note that Mishra explicitly discloses that "[t]he amount of dispersant
viscosity index improver in the lubricating oil ... can be from about
20 wt.% to about 18 wt.%" (Mishra ,r 44). In view of Mishra's claim 10,
which limits "the amount of the dispersant viscosity improver in the
lubricating oil ... from 2 weight percent to about 18 weight percent," one of
ordinary skill in the art would have gleaned from Mishra's disclosure in
paragraph 44 that "about 20 wt.%" should instead read "about 2.0 wt.%."
8
Appeal2018-006319
Application 15/210,502
Klosak, 455 F.2d at 1080. As the Examiner found, however, "Mishra
specifically teaches the exact same amount of about 2. 0 wt.%" of the
dispersant viscosity index improver that Appellant added to the exemplified
engine lubricating oil compositions (Ans. 12 (emphasis added); see Spec.
Table 5 ( 1. 8 wt. % amount of dispersant viscosity index improver added)).
For the reasons set forth above in rejection I and in the Answer, Appellant
has not met his burden of showing unexpected results.
On this record, we find that the preponderance of the evidence favors
the Examiner's obviousness conclusion with regard to claim 1.
Accordingly, we affirm the Examiner's § 103 rejections of claims 1-30.
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The Examiner's decision 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)(l)(iv).
ORDER
AFFIRMED
9