Ex Parte Wenderoth et al

Board of Patent Appeals and Interferences

Feb 16, 2012

10333611 (B.P.A.I. Feb. 16, 2012)

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

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMAnON NO.
10/333,611 01122/2003 Bernd Wenderoth 51605 8121
26474 7590 0211712012
EXAMINERNOVAK DRUCE DELUCA + QUIGG LLP
300 NEW JERSEY AVENUE NW OGDENJR,NECHOLUS
FIFTH FLOOR
ART UNIT PAPER NUMBER WASHINGTON, DC 20001
1761
MAIL DATE DELIVERY MODE
02/1712012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BERND WENDEROTH
and KARLHEINZ SCHAKER
________________

Appeal 2010-007745
Application 10/333,611
Technology Center 1700
________________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007745
Application 10/333,611

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A. Introduction1
Bernd Wenderoth and Karlheinz Schaker (“Wendroth”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-4, 6-10, 12,
and 13.3 We have jurisdiction. 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to glycol-based antifreeze
compositions containing carboxamides [generically, R-CO-NH2] or
sulfonamides [generically, R-SO2-NH2]. The compositions are said to be
especially useful as corrosion-inhibited antifreeze compositions for internal
combustion engines that comprise magnesium or magnesium alloys.
(Spec. 1, ll. 6-14.)
Representative Claim 1 reads:
1. A process for protecting internal combustion engines
comprising magnesium or magnesium alloys against
corrosion, said process comprising adding coolant
compositions to cooling systems of the internal combustion
engines which comprise magnesium or magnesium alloys,
which coolant compositions are based on an antifreeze
concentrate which has

1 Application 10/333,611, Antifreeze Concentrates Based on Amides, and
Coolant Compositions Comprising Them and Intended for Protecting
Magnesium and Magnesium Alloys, filed 22 January 2003 as the national
stage of an international application filed 13 July 2001, claiming the benefit
of an application filed in Germany on 24 July 2000. The real party in
interest is listed as BASF SE (Appeal Brief, filed 23 September 2009
(“Br.”), 2.)
2 Office action mailed 18 August 2009 (“Final Rejection”; cited as “FR”).
3 The Examiner has indicated that Copending claims 14-18 would be
allowable if written in independent form. (Ans. 2.) Remaining copending
claim 11 has been withdrawn from consideration. (Id.)
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Application 10/333,611

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a pH of from 4 to 11, and
is based on alkylene glycols or their derivatives or on
glycerol, containing
a) from 0.05 to 10% by weight, based on the total
amount of the concentrate, of one or more
carboxamides and/or sulfonamides
and wherein when compound a) is aliphatic, amides
of said compound a) are unsubstituted or alkyl-
substituted on the nitrogen atom of the amido group.
(Claims App., Br. 9; indentation and paragraphing added.)
The Examiner maintains the following grounds of rejection:4
Claims 1-4, 6, 7, 9, 10, 12, and 13 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Ordelt5
and either Ciardi6 or Maes.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner maintains that it would have been obvious to use the
glycol-based coolant compositions described by Ordelt that comprise
benzamide or phthalimide compounds, in magnesium internal combustion
engines, because, in the Examiner’s words, “Ciardi et al[.] or Maes et al[.]

4 Examiner’s Answer mailed 18 December 2009 (“Ans.”).
5 Hermann Emil Ferdinand Ordelt et al., Inhibited Antifreeze Composition,
U.S. Patent 3,362,910 (1968).
6 Claude Ciardi and Valerie Rousselon, Antifreeze Composition, U.S.
Patent 5,723,061 (1998)
7 Jean-Pierre Maes and Walter A. van Neste, Corrosion-Inhibited Antifreeze
Formulations, U.S. Patent 5,366,651 (1994).
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teach[es] the equivalence of surfaces such as aluminum or magnesium for
antifreeze compositions that are glycol based and further employ as [sic]
azoles and other conventional corrosion inhibitors wherein said
compositions encompass the pH of the claimed invention.” (Ans. 4, 1st full
para.)
Wendroth argues (Br. 6, 1st full para.) that the Examiner erred in
concluding that either Ciardi or Maes teaches the equivalence of magnesium
and aluminum surfaces in glycol-based coolants that contain benzamide or
phthalimide. Wendroth relies, in part, on the Declaration of Ladislaus
Meszaros,8 who testifies that he is a trained chemical technician with
principal experience since 1973 in developing and testing antifreeze
compositions with corrosion-protecting properties.
Regarding Ciardi, Wendroth argues (Br. 5, last para.)—and the
Examiner does not deny—that the glycol-based antifreeze compositions
taught by Ciardi (the additives comprise mixtures of dicarboxylic acids or
their salts, certain diazoles, and a triazole) are not related to the
compositions taught by Ordelt. Moreover, Wendroth argues that Ciardi does
not describe tests of the corrosion inhibitor system on magnesium or
magnesium alloys, but only tests copper, solder, brass, steel, cast iron, and
aluminum. (Id.) Nor, according to Wendroth, does Ciardi suggest that
magnesium would be protected against corrosion by the inhibitor
composition. (Id.) The sole mention of magnesium (Ciardi col. 1, l. 19), in

8 Declaration under 37 C.F.R. §1.132 of Ladislaus Meszaros,
dated 12 September 2008, and filed 22 September 2008, attached in the
Evidence Appendix, along with two exhibits from the literature.
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Wendroth’s view, is to emphasize the difficulty of protecting systems that
contain magnesium against galvanic corrosion [corrosion due to the contact
of two different metals]. (Id. at 6, ll. 18-20.)
Similarly, Wendroth argues (Br., para. bridging 6-7) that Maes
describes a corrosion inhibiting composition for glycol-based antifreeze
formulations comprising an aliphatic monobasic acid, and a triazole
compound. Such compositions, in Wendroth’s view—which the Examiner
does not contest—are not related to those taught by Ordelt. Moreover,
Wendroth argues that even if Maes did teach aluminum and magnesium to
be equivalent with respect to the compositions taught by Maes, that teaching
would not have been relevant to the expectation of successfully using the
compositions taught by Ordelt with magnesium or magnesium alloys.
(Id. at 7.)
Finally, Wendroth argues that comparison of the response of
aluminum to Ordelt compositions [II with V and III with VI] show that more
benzoamide or phthalimide [0.25 versus 0.05 percent by weight] in the
antifreeze composition results in a greater change of weight of the aluminum
test sample. (Br. 7.)
The Examiner responds that the mention of magnesium by Ciardi and
by Maes suffices to show that these references “provide a teaching of
equivalence as it relates to a variety of surfaces used in cooling and heat
exchange in internal combustion engines.” (Ans. 8.) This argument has no
persuasive merit, as the use or the desirability of use of aluminum and
magnesium in internal combustion engines is not in dispute. Rather, what
must be established is that artisans would have recognized the chemical
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equivalence of magnesium and aluminum metals in glycol-based
compositions that contain benzamide or phthalimide, especially at high
temperatures, where corrosion is most severe.
The Examiner’s next argument, that an artisan would have been
motivated to “include the compositions of Ordelt . . . to [sic: in] the
compositions of Ciardi . . . and Maes . . . because synergistic results would
have been obtained” (Ans., para. bridging 8-9) is without merit. The
Examiner has not provided any credible evidence that the prior art taught or
suggested such “synergistic results.” The Examiner’s reliance throughout
the Answer on the principles enunciated in KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) is ineffective because the record lacks evidence
supporting the Examiner’s conclusion that magnesium and aluminum were
recognized as being equivalent materials for the purpose taught by Ordelt.
More precisely, the record lacks evidence that magnesium and aluminum
would have been expected to have similar corrosive behavior under the
testing conditions described by Ordelt, and that that behavior would have
been considered acceptable for use in an internal combustion engine cooling
system.
The Examiner does not accord the testimony of Mr. Meszaros
significant weight because, in the Examiner’s view (Ans., para.
bridging 9-10):
[t]he number of finite materials disclosed in Ciardi and Maes
is less than 10, which means one of ordinary skill in the art
. . . having problems with corrosiveness . . . would have
looked to the materials of which engines are constructed. . .
and would have been able to narrow the group of potential
salt-formers to a groups of less than 10 metal[s], one being
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magnesium and magnesium alloy, which would be an
acceptable number to form “a reasonable expectation of
success.”
The flaw in this rationale is that it assumes that Ciardi and Maes teach that
magnesium and aluminum would have been expected to respond
equivalently to glycol solutions containing benzamide or phthalimide. The
Examiner has not, however, directed our attention to any credible evidence
regarding the corrosion properties of magnesium or the response of
magnesium to the solutions taught by Ciardi or by Maes would be
substantially the same as the response of aluminum. Nor is there credible
evidence that the solutions taught by Ciardi or by Maes would have been
regarded as sufficiently similar to those taught by Ordelt that an artisan
would have extended any suggestions of equivalence to the systems taught
by Ordelt. At most, the record indicates the unremarkable and uncontested
finding that both magnesium and aluminum were recognized to be very
reactive light-weight metals, and that their use as structural materials in
corrosive environments was hampered by the need to find corrosion-
inhibited coolants.
Mr. Meszaros testifies that he is a trained chemical technician and that
he has technical experience from 1973 through 2008 that is directly relevant
to the corrosion properties of magnesium and magnesium alloys in glycol-
based coolants. We find Mr. Meszaros is well-qualified to testify regarding
the state of the art and the knowledge of persons skilled in the art. The
Examiner has not provided any basis to question the accuracy or reliability
of Mr. Meszaros’s testimony. While testimony is not automatically granted
dispositive weight, Mr. Meszaros’s testimony and the accompanying
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exhibits, which support the importance of galvanic corrosion of magnesium,
especially in hot ethylene glycol solutions, are the only direct evidence
besides the 611 Specification regarding the corrosion properties of
magnesium under conditions relevant to the cooling of internal combustion
engines. By comparison, we find the factual inferences drawn by the
Examiner from the mere mention of magnesium as a material requiring
protection against corrosion (and no tests indicating that such protection is
available) of negligible probative value.
The Examiner also accords no weight to Wendroth’s argument that
Ordelt’s data indicates a negative correlation of the amount of benzamide or
phthalimide with protection of aluminum “because Ordelt is silent with
respect to any explanation regarding this matter.” (Ans. 11.) In the
Examiner’s view, the indication by Ordelt that benzamide and phthalimide
are part of the inventive concept suffices to support the obviousness
rejection. (Id.) However, if the Examiner’s position is that the record
indicates the equivalence of magnesium and aluminum in response to
benzamide and phthalimide as corrosion inhibitors, we do not see how
evidence of a negative correlation can be so simply dismissed, particularly
when solutions I and IV, without either compound, have better anticorrosive
properties for aluminum.
The weight of the evidence of record supports Wendroth’s arguments
that the Examiner erred harmfully in rejecting the appealed claims in view of
the applied prior art.
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Application 10/333,611

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C. Order
We REVERSE the rejection of claims 1-4, 6, 7, 9, 10, 12, and 13
under 35 U.S.C. § 103(a) in view of the combined teachings of Ordelt and
either Ciardi or Maes.
REVERSED

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