Ex Parte Scott

Board of Patent Appeals and Interferences

Feb 20, 2009

10351947 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBIN SCOTT
____________

Appeal 2009-0185
Application 10/351,947
Technology Center 1700
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Decided:1 February 23, 2009
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Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and MARK
NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-10. We have jurisdiction under 35 U.S.C. § 6.

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).
Appeal 2009-0185
Application 10/351,947

We AFFIRM for the reasons set forth below and in the Answer.
Statement of the Case
Appellant claims a heavy duty diesel engine lubricating composition
which meets certain performance requirements relating to piston cleanliness.
The claimed composition comprises a major amount of an oil comprising at
least 35 mass % of a Group III base stock and a minor amount of an additive
composition comprising a detergent composition introducing no greater than
3200 ppm of metal into the lubricating oil composition (claim 1).
According to Appellant, the invention under consideration is directed
to the discovery of “a previously unrecognized correlation between the
amount of Group III base stock employed and the viscosity of the lubricant
composition on the one hand, and piston cleanliness as measured in an
industry standard OM441LA, on the other” (Br. 2). More specifically,
applicants have found that, in lubricants, having relatively
low viscosities in terms of cold cranking simulated (CCS)
viscosity, formulated with at least 35 mass % of a Group III
base stock, a relatively low ash lubricant can be formulated
by reducing the amount of metal-containing detergent, which
lubricant will, even in the presence of reduced amounts of
detergent, provide the excellent piston cleanliness
performance necessary to meet the stringent industry
standards of the API CG-4, API CH-4 and API CI-4
standards.

(Id.).
Further details concerning the claimed lubricating oil composition are
set forth in representative claim 1. A copy of this claim, taken from the
Claims Appendix of the Brief, appears below.

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Application 10/351,947

1. A heavy duty diesel engine lubricating oil composition meeting
the performance requirements of at least one of API CG-4, API CH-4 and
API CI-4, said lubricating oil composition comprising, or made by
admixing:

(A) a major amount of an oil of lubricating viscosity comprising at
least 35 mass % of a Group III base stock, based on the mass of
the oil of lubricating viscosity, that contains at most 0.03 mass
% of sulfur, based on the mass of said base stock, and that has a
viscosity index of 120 or greater and has greater than or equal
to 90 mass % saturates, based on the mass of said base stock;
and

(B) a minor amount of an additive composition comprising:

(i) a detergent composition introducing no greater than 3200
ppm of metal into said lubricating oil composition; and

(ii) one or more other additives;

wherein the oil composition has a cold cranking simulated viscosity,
measured according to ASTM D2602, of less than 7000 mPa.s at -25°C and
a sulfated ash content, measured according to ASTM D874, of less than 1.35
mass %, based on the mass of the oil composition.

All appealed claims are rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Curtis (US 6,331,510 B1) or Waddoups (US
6,333,298 B1).
The Examiner acknowledges that the lubricating oil compositions of
Curtis and Waddoups respectively are not expressly disclosed as possessing
the performance characteristics required by claim 1 (Ans. 3-5).
Nevertheless, the Examiner determines that the teachings of Curtis and
Waddoups encompass lubricating oil compositions which contain the same
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ingredients and amounts as required by claim 1 and therefore which
necessarily possess the performance characteristics of claim 1 (id.).
Issue
Has Appellant shown error in the Examiner’s determination that
Curtis and Waddoups respectively teaches, or at least would have suggested,
lubricating oil compositions which contain the same types and amounts of
ingredients, and therefore necessarily would possess the same
characteristics, as the lubricating oil compositions of claim 1?
Findings of Fact
Curtis discloses a heavy duty diesel engine lubricating oil composition
(col. 1, ll. 7-9) comprising a synthetic base oil including Group III base oil
of the type required by claim 1 (col. 2, ll. 1-2 and 23-34) and at the
concentrations required by claim 1 (i.e., 75 to 100 % by weight; see patent
claim 1 in comparison with patent claim 8).
Curtis’s lubricating oil compositions also contain additives including a
detergent such as a phenate (col. 5, ll. 58-59) which is one of the detergent
types used in Appellant’s invention (Spec. 12, ll. 1-3). Curtis teaches that,
when the phenate detergent is a saligenin derivative, the amount will
typically be 0.5 to 4 % by weight of the lubricant composition (col. 11, ll.
14-18) which falls within the 0.01-6 mass % detergent concentration range
disclosed by Appellant (Spec. 18, ll. 24-28, and 19, sole Table).
Waddoups discloses a lubricating oil composition which may be used
as heavy diesel motor oil (col. 5, ll. 27-30). The lubricating oil composition
comprises a base stock oil, such as a Group III base stock, of the type and in
the concentration required by claim 1 (col. 1, l. 51 - col. 2, l. 31).
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Waddoups’ lubricating oil composition contains a calcium detergent
such as a calcium phenate or sulfonate (col. 2, ll. 45-56), which corresponds
with the detergent types that may be used in Appellant’s lubricating oil
composition (Spec. 12, ll. 1-3). Waddoups teaches that the amount of
calcium detergent used in the lubricating oil composition typically will be
from about 0.5 to 5 weight % (col. 3, ll. 26-29) which falls within a
detergent concentration range of 0.01-6 mass % disclosed by Appellant
(Spec. 18, ll. 24-28, and 19, sole Table).
Waddoups exemplifies a lubricating oil composition which contains
the type and amount of Group III base stock required by claim 1 in
combination with calcium sulfonate and calcium phenate detergents of the
type encompassed by claim 1 (col. 8, l. 21 to col. 9, l. 9; especially Oil 1 in
the col. 8 Table). The amount of calcium introduced by these detergents
totals 0.112 % or 1,120 ppm (col. 8, ll. 44-46) which falls within the range
of metal introduced by the detergent composition as required by claim 1.
Principals of Law
The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
art, cannot impart patentability to claims to the known composition. In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Products of identical chemical
composition cannot have mutually exclusive properties. Id.
Where the claimed and prior art products are identical or substantially
identical, the Patent and Trademark Office (PTO) can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Whether the rejection is based on inherency under 35 U.S.C.
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§ 102, on prima facie obviousness under 35 U.S.C. § 103 jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products. Id.
Evidence of unexpected results can be used to rebut a prima facie case
of obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369-70 (Fed.
Cir. 2007). By definition, any superior property must be unexpected to be
considered as evidence of non-obviousness. Id. at 1371. A superior
property is not unexpected if it results from routine, verification testing to
optimize selection of known ingredients because selection of the best
ingredients proves nothing more than routine optimization that would have
been obvious to one of ordinary skill in the art. Id. at 1371-72.
Analysis
Initially, we observe that Appellant does not separately argue any
particular claim with any reasonable specificity. Since rejected claims 1-10
have been argued as a group by Appellant, we select independent claim 1 to
represent this group for purposes of deciding this appeal. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant argues that the rejections before us are improper for the
following reasons:
The Curtis et al. patent puts no limit on the sulfated ash
content of the lubricants described, fails in any manner to
suggest a correlation between HDD lubricant viscosity and
base stock selection, and the amount of detergent necessary
to provide the level of piston cleanliness performance needed
to meet API CG-4 or higher standards. Therefore, the Curtis
et al. patent cannot be deemed to suggest to one skilled in the
art that the amount of detergent, and thus ash, could be
reduced in lower viscosity HDD lubricants formulated with
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base stocks including the claimed amount of Group III base
stock.

(Br. 4).

Like the Curtis et al. patent, the Waddoups et al. patent fails
to disclose a low ash HDD lubricant that provides piston
cleanliness performance sufficient to meet the API CG-4 or
higher standards and in no way suggests that, for low
viscosity lubricants, by selecting certain base stocks,
acceptable piston cleanliness performance in HDD
lubricating oil compositions can be provided with reduced
amounts of detergent.

(Br. 5).

These arguments do not challenge with any reasonable specificity the
Examiner’s determination that each of Curtis and Waddoups teaches, or at
least would have suggested, lubricating oil compositions containing the
types and amounts of ingredients required by claim 1. For this reason and
because the Examiner’s determinations are supported by the findings listed
above, we consider the claim 1 composition to be patentably
undistinguishable, in terms of ingredients and amounts, from the
compositions of Curtis and Waddoups. Indeed, on this record, the claim 1
composition appears to lack novelty, at least in terms of ingredients and
amounts, over the Oil 1 composition disclosed by Waddoups in the Column
8 Table.
Appellant’s arguments also do not challenge with any reasonable
specificity the Examiner’s additional determination that the Curtis and
Waddoups compositions, which seemingly are identical to the claim 1
compositions, necessarily must possess the same characteristics as the claim
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1 compositions. Regardless, unsupported arguments alone are inadequate to
establish that the Curtis and Waddoups compositions do not possess the
performance characteristics required by claim 1. This is because products of
identical chemical compositions cannot have mutually exclusive properties.
Therefore, to establish that the applied prior art compositions do not
necessarily or inherently possess the characteristics of the claim 1
composition, Appellant must submit proof.
Appellant’s arguments for patentability are based on the failure of
Curtis and Waddoups to recognize the correlations discovered by Appellant
whereby cleanliness performance is achieved even in the presence of
reduced detergent amounts. However, the discovery of this new property of
cleanliness performance for a previously known composition, even when the
property is unobvious, cannot impart patentability to a claim directed to the
known composition.
Appellant further argues that, even if a prima facie case of
obviousness were to have been established, “it would be rebutted by the test
data provided in the specification” (Br. 6). This data, which is presented in
Table 1 (Spec. 23), is said to show that, “in lubricants formulated with the
required base stock, the use of a reduced amount of detergent provides
improved piston cleanliness and boost[s] pressure loss performance
compared to both the 10W40 grade lubricants of Examples B, C, and D and
the higher viscosity 15W40 grade lubricant of Example A” (Br. 6).
This Table 1 data fails to evidence patentability for a number of
reasons.
First, the Table fails to compare the compositions of claim 1 to the
compositions of the applied prior art and therefore fails to establish that the
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claim 1 compositions are even novel over this prior art. That is, the Table 1
data provides no evidence rebutting the Examiner’s determination that the
compositions of Curtis and Waddoups necessarily possess the performance
characteristics required by claim 1. Correspondingly, Appellant does not
even allege that the data of Table 1 is commensurate in scope with the
breadth of claim 1 (e.g., unlike claim 1, the Table 1 disclosure does not
reveal the amount of metal introduced by detergent).
Second, Appellant’s Specification disclosure characterizes the Table 1
results as merely “improved” (Spec. 21, ll. 26-29) rather than unexpected.
Therefore, even if the patentability issue before us were limited to
obviousness and Table 1 compared the claim 1 compositions to the closest
prior art (i.e., Curtis and Waddoups) compositions, the results are not
established as unexpected on this record.
Third, Table 1 indicates that Appellant’s selection of known types and
amounts of base stock and detergent is nothing more than routine
optimization that would have been obvious to one of ordinary skill in the art.
Specifically, the record reflects that Appellant has optimized selection of the
known types and amounts of base stock and detergent disclosed by Curtis
and Waddoups in order to achieve a known and desired cleanliness
performance. The fact that the resulting composition possesses the desired
performance evinces routine optimization rather than nonobviousness.
Conclusions of Law
Appellant has not shown error in the Examiner’s determination that
Curtis and Waddoups respectively teaches, or at least would have suggested,
lubricating oil compositions which contain the same types and amounts of
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ingredients, and therefore necessarily would possess the same
characteristics, as the lubricating oil compositions of claim 1.
We sustain, therefore, the § 103 rejections of claims 1-10 as being
unpatentable over either Curtis or Waddoups.

ORDER
The decision of the Examiner 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

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