Ex Parte Ozaki et al

Patent Trial and Appeal Board

Nov 29, 2016

12296816 (P.T.A.B. Nov. 29, 2016)

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.
12/296,816 12/16/2008 Takahiro Ozaki 46067-78520 1791
21888 7590 12/01/2016
THOMPSON OORT TRN T T P
EXAMINER
ONE US BANK PLAZA GOLOBOY, JAMES C
SUITE 3500
ST LOUIS, MO 63101 ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte TAKAHIRO OZAKI, KOUICHINUMAZAWA,
SHINICHI TAKABE, and TAKAAKI SHIBATA
Appeal 2015-005069
Application 12/296,816
Technology Center 1700
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
BRIAN D. RANGE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-005069
Application 12/296,816
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1,3,5, and 6. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is directed to a grease composition for constant
velocity joints suitable for use at the lubrication points of constant velocity
joints in automobiles (Spec. 1).
Claim 1 is illustrative:
1. A grease composition for use in constant velocity joints,
consisting essentially of 92 to 97% by weight of a urea grease
constituted from a base oil and a urea compound and the
following components:
(A) 1 to 2% by weight of a molybdenum
dialkyldithiocarbamate as represented by the undermentioned
formula (I)
R
X
H-CX
s
X X
s
o S O s R
'X %8 X X
M<\ Me C~Nn\ X XX X
s s R
(I)
(where R denotes an alkyl group of 1 - 24 carbons); and
(B) 0.5 to 2% by weight of at least one kind of a
molybdenum dialkyldithiophosphate or a molybdenum
diaryldithiophosphate as represented by the undermentioned
formula (II)
RO SOSOS OR
XX * X X * XX
P Mo. ,Mo ,P.
XXX XX XXX
RO S S S OR on
2
Appeal 2015-005069
Application 12/296,816
(where R is a primary or secondary alkyl group or an aryl
group); and
(C) 0.5 to 2% by weight of 2-(4-
morpholinyldithio)benzothiazole as represented by the
undermentioned formula (III)
D) 0.5 to 1 % by weight of a calcium sulphonate; and
(E) 0.5 to 1 % by weight of at least one kind of a zinc
diakyldithiophosphate or a zinc diaryldithiophosphate as
represented by the undermentioned formula IV
N
CM)
and
(IV)
(where R’ is a primary or secondary alkyl group or an aryl group).
3
Appeal 2015-005069
Application 12/296,816
Appellants appeal the following rejection:
Claim 1,3,5, and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Okaniwa et al., (US 6,355,602 Bl, issued March 12, 2002) in view of
Yamazaki et al., (US 5,922,654, issued July 13, 1999).
Appellants argue claim 1 only (App. Br. 3—7).
FINDINGS OF FACT & ANALYSIS
The Examiner finds that Okaniwa teaches a grease composition
containing molybdenum dialkylthiocarbamate (component (A) in claim 1),
molybdenum dialkylthiophosphate (component (B)) in claim 1), and calcium
sulphonate (component (D) of claim 1) (Final Act. 2). The Examiner finds
that Okaniwa does not teach the addition of component (C) of claim 1 (i.e.,
2-(4-morpholinyldithio)benzothiazole) or the zinc dithiophosphate (i.e.,
component (E) of claim 1) (Final Act. 2). The Examiner finds that
Yamazaki discloses a lubricant composition useful as greases in constant
velocity joints like Okaniwa (Final Act. 3). The Examiner finds that
Yamazaki teaches that lubricants that contain organomolybdenum
compounds, like Okaniwa’s composition, and an ashless sulfur compound
(Final Act. 3). The Examiner finds that Yamazaki discloses that the ashless
sulfur compound may include 2-(4-morpholinyldithio)benzothiazole as
recited in claim 1. Id. The Examiner finds that Yamazaki teaches using zinc
dialkylthiophosphate with organomolybdenum compound containing
lubricants. Id. The Examiner finds that Yamazaki teaches that the total
additive concentration in the lubricant is between 0.3% to 12% by weight so
that the claimed amounts of the zinc compound is encompassed by the range
disclosed in Yamazaki (Final Act. 3). The Examiner finds that the amounts
4
Appeal 2015-005069
Application 12/296,816
of the components in the lubricant suggested by Okaniwa and Yamazaki
overlap (Final Act. 3-4). The Examiner concludes that it would have been
obvious to include the 2-(4-morpholinyldithio)benzothiazole and the zinc
dialkyldithiophosphate of Yamazaki in the grease of Okaniwa because
Yamazaki teaches these are useful additives when combined with
organomolybdenum lubricant additives in greases for constant velocity
joints (Final Act. 4). The Examiner further finds that Yamazaki teaches that
the compositions containing the combined additives have superior load
bearing and extreme pressure properties as well as excellent lubricating
performance at high temperatures (Ans. 5). The Examiner finds that because
Yamazaki teaches that 2-(4-morpholinyldithio)benzothiazole and the zinc
dialkyldithiophosphate are combinable with organomolybdenum compounds
in lubricant compositions, there is a reasonable expectation that such a
combination would have been successful (Ans. 5).
Appellants argue that the Examiner has not provided a sufficient
reason to combine Yamazaki’s 2-(4-morpholinyldithio)benzothiazole and
the zinc dialkyldithiophosphate additives with the grease of Okaniwa (App.
Br. 4). Appellants contend that the Examiner has not shown where there is a
teaching that including 2-(4-morpholinyldithio)benzothiazole and zinc
dialkyldithiophosphate would impart any particular effect on the
composition (App. Br. 5). Appellants contend that Yamazaki discloses 2-(4-
morpholinyldithio)benzothiazole as one of over one hundred ashless sulfur
compounds with a disclosed preference for 1,3,4-thiadiazole. Id. Appellants
contend that Yamazaki’s example 12 in Table 4 and Example 3 in Table 6
show that when 2-(4-morpholinyldithio)benzothiazole is used there is no
improvement in durability such that a person of ordinary skill in the art
5
Appeal 2015-005069
Application 12/296,816
would have to choose from one hundred compounds to use as an additive
with no teaching as to which would improve durability of the lubricant (App.
Br. 6). Appellants contend that the Examiner engaged in impermissible
hindsight in picking and choosing the various compounds and putting them
together in a lubricant composition to meet the claimed composition. Id.
Contrary to Appellants’ arguments, the Examiner finds that Yamazaki
teaches that adding 2-(4-morpholinyldithio)benzothiazole and zinc
dialkyldithiophosphate provides a lubricant having superior load bearing and
extreme pressure properties as well as excellent lubricating performance at
high temperatures (Ans. 5). Indeed, Yamazaki discloses that the
combination of an organomolybdenum compound and an organozinc
compound to a lubricant composition improves the load bearing properties
and extreme pressure properties of the lubricant (col. 7, lines 14-18).
Yamazaki further discloses combining organomolybdenum compounds (i.e.,
molybdenum dithiophosphate and molybdenum dialkylthiocarbamate) which
are same type of compounds required by claim 1 and the ashless sulfur
compound, which includes 2-(4-morpholinyldithio)benzothiazole (col. 7,11.
40-67; col. 8,11. 7—8, 28—33). Yamazaki discloses that the amounts of the
organomolybdenum and ashless sulfur compound must be within the certain
limits (i.e., 0.3 to 12% by weight) otherwise the lubricant durability is
reduced (col. 8,11. 35—46). In other words, Yamazaki teaches that the
combination of the organomolybdenum compounds and the ashless sulfur
compound (e.g., 2-(4-morpholinyldithio)benzothiazole) provide a durable
lubricant as long as the amounts are kept within the limits disclosed by
Yamazaki.
6
Appeal 2015-005069
Application 12/296,816
Although Yamazaki discloses 2-(4-morpholinyldithio)benzothiazole
among a list of what Appellants characterize as a hundred compounds,
Appellants do not dispute the Examiner’s finding that each of the additives
of the list is reasonably expected to provide a durable lubricant when present
in amount within the ranges disclosed by Yamazaki (Ans. 5). In other words,
Yamazaki’s disclosure of a multitude of effective combinations does not
render any one of them less obvious. Merck & Co. v. Biocraft Laboratories,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Based upon these disclosures, we are unpersuaded by Appellants’
argument that Yamazaki does not teach a particular effect is achieved by
using 2-(4-morpholinyldithio)benzothiazole and the zinc
dialkyldithiophosphate such that the Examiner engaged in impermissible
hindsight. Rather, the Examiner provides a reasonable basis for combining
Yamazaki’s 2-(4-morpholinyldithio)benzothiazole and zinc
dialkyldithiophosphate lubricant additives with Okaniwa’s
organomolybdenum containing grease in order to improve the durability and
the load bearing and extreme pressure properties of the lubricant.
Appellants do not file a Reply Brief contesting the Examiner’s findings that
Yamazaki discloses the additives 2-(4-morpholinyldithio)benzothiazole and
zinc dialkyldithiophosphate impart durability, load bearing, and extreme
pressure properties to the lubricant (Ans. 5). The Examiner’s finding that
Yamazaki’s teaching to use the 2-(4-morpholinyldithio)benzothiazole and
the zinc dialkyldithiophosphate additives in organomolybdenum compound
containing lubricants provides a reasonable expectation of successfully
combining these additives with Okaniwa’s organomolybdenum containing
lubricant composition.
7
Appeal 2015-005069
Application 12/296,816
We find that the Examiner has established a prima facie case of
obviousness. We now consider the prima facie case anew in light of
Appellants’ evidence and argument of unexpected results.
Appellants argue that Comparative Examples 5 and 10 in Tables 3 and
4 of the Specification show that when 2-(4-morpholinyldithio)benzothiazole
is used the durability performance of the lubricant is improved (App. Br. 6—
7). Appellants contend that Comparative Examples 5 and 10 also show that
calcium sulphonate (Component D according to Appellants) is critical to
achieving good durability in that the depth of wear is about six times lower
in Examples 1 to 10 of the Specification (Tables 1 and 2) than in
Comparative Examples 5 and 10 that do not have calcium sulphonate (App.
Br. 7).
Appellants’ evidence fails to establish unexpected results for the
claimed composition that includes Components A to E. The showing in
Comparative Examples 5 and 10 are not probative of nonobviousness of the
subject of claim 1 because these examples do not include calcium sulphonate
(component D) as is required by claim 1 (Ans. 6). Moreover, Appellants’
Example 1 to 10 are limited to two molybdenum dithiophosphates and one
molybdenum dialkyldithiocarbamate (Spec. 10, 14—15). The claims,
however, include molybdenum dithiophosphates where the “R” group in the
formula may be a primary or secondary alkyl group or an aryl group. The
claims further include a molybdenum dialkyldithiocarbamate that includes
“R” groups in the formula that can be an alkyl group of 1 to 24 carbons.
Appellants limited showing is insufficient establish unexpected results over
the breadth of claim 1. In other words, the evidence is not commensurate in
scope with the materials required by claim 1.
8
Appeal 2015-005069
Application 12/296,816
On this record, we affirm the Examiner’s § 103(a) rejection of claims
1,3,5, and 6 over Okaniwa and Yamazaki.
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)(1).
ORDER
AFFIRMED
9