EXXONMOBIL RESEARCH AND ENGINEERING COMPANY et al.

Patent Trials and Appeals Board

Oct 1, 2020

15115766 - (D) (P.T.A.B. Oct. 1, 2020)

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.
15/115,766 08/01/2016 Ko ONODERA 172370 3665
25944 7590 10/01/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KO ONODERA, SHUZO NEMOTO, TOMOHIRO KATO,
KOSUKE FUJIMOTO, and MINORU YAMASHITA
Appeal 2020-000375
Application 15/115,766
Technology Center 1700

Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–10. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on September 17, 2020.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Exxonmobil
Research and Engineering Co. and Toyota Jidosha Kabushiki Kaisha.
Appeal Br. 1.
Appeal 2020-000375
Application 15/115,766

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A lubricating oil composition adapted for use in a
supercharged gasoline engine, comprising: a lubricating oil base
oil, a compound having at least one element selected from
calcium and magnesium a compound having at least one element
selected from molybdenum and phosphorous, and an ashless
dispersant having nitrogen; wherein,

X as determined from following equation (1):

X = ([Ca] + 0.5[Mg]) × 8 - [Mo] × 8 - [P] × 30 (1)

wherein [Ca], [Mg], [Mo] and [P] in equation (1) respectively
represent the concentrations (wt%) of calcium, magnesium,
molybdenum and phosphorous in the lubricating oil
composition,

satisfies the expression X ≤ -1.68;

Y as determined from following equation (2):

Y = [Ca] + 1.65[Mg] + [N] (2)

wherein [Ca], [Mg] and [N] in equation (2) respectively
represent the concentrations (wt%) of calcium, magnesium and
nitrogen derived from ashless dispersant in the lubricating oil
composition,

satisfies the expression Y ≥ 0.18; and,

Z as determined from following equation (3):

Z = [N] / ([Ca] + [Mg]) (3)

Appeal 2020-000375
Application 15/115,766

3
wherein [Ca], [Mg] and [N] respectively represent the
concentrations (wt%) of calcium, magnesium and nitrogen
derived from an ashless dispersant in the lubricating oil
composition,

further satisfies the expression 0.3 ≤ Z ≤ 1.5.

REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Kasai US 7,820,599 B2 Oct. 26, 2010

REJECTION
Claims 1 and 3–10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kasai.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon review of the
evidence and each of the respective positions set forth in the record, we find
that the preponderance of evidence supports Appellant’s position in the
record. Accordingly, we reverse the Examiner’s rejection on appeal
Appeal 2020-000375
Application 15/115,766

4
essentially for the reasons set forth in the record by Appellant, and add the
following for emphasis.
We refer to the Examiner’s position made on pages 3–5 of the Final
Office Action and on pages 3–6 of the Answer.
Among other requirements, claim 1 requires that X ≤ - 1.68. It is the
Examiner’s position that although this claim requirement is not specifically
met by the examples of Kasai, the entire disclosure of Kasai is not limited to
the six examples therein, but more broadly teaches that the entire ranges
of phosphorus, molybdenum, calcium, magnesium and nitrogen contents are
acceptable for use in the lubricating oil compositions. Final Act. 5. The
Examiner states that because Kasai teaches that the entire ranges of the
elements are suitable, each of the various combinations of these elements
would be presumptively effective in the disclosed lubricant compositions.
Id. See also Ans. 5–6.
We agree with Appellant that while Kasai is not limited to the
examples, the record before us lacks articulated reasoning, based on the
disclosure of Kasai as a whole, as to why one of ordinary skill in the art
would consider first, that the expression for X, i.e., X = ([Ca] + 0.5[Mg]) × 8
- [Mo] × 8 - [P] × 30, is significant, and two, why amounts of Ca, Mg, Mo
and O should be adjusted so that X < -1.68. Appeal Br. 7. We thus are
persuaded that the rejection lacks proper motivation for the modifications as
proposed by the Examiner in the rejection. Reply Br. 1–2. See, e.g., KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
Appeal 2020-000375
Application 15/115,766

5
does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”); In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when
the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”); see
also, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In view of the above, we reverse the rejection.
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–10 103 Kasai 1, 3–10

REVERSED