James C. Dodd et al.

Patent Trials and Appeals Board

Jan 29, 2020

14174884 - (D) (P.T.A.B. Jan. 29, 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.
14/174,884 02/07/2014 James C. Dodd PF2013M001 3741
25553 7590 01/29/2020
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
01/29/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES C. DODD and JOSHUA L. BRADLEY-SHAW
____________

Appeal 2019-002708
Application 14/174,884
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 7–18. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Infineum
International Limited. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to a method of preparing a
trunk piston marine engine lubricating oil composition for a medium-speed
four-stroke compression-ignited marine engine. (Spec. 1.) The following
rejections are presented for appeal:
Claims 1–4 and 7–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Garner (WO 2010/115594 A1; Oct. 14, 2010) the U.S.
equivalent (US 2012/0028522 A1; Feb. 2, 2012) is used for making the
rejection.
Claims 1–4 and 7–18 are provisionally rejected on the ground of non-
statutory double patenting as unpatentable over claims 1–7 of copending
Application No. 14/267, 950 (now US 10,167,440 B2; Jan. 1, 2019) in view
of Garner (2012/0028522).
Claims 1–4 and 7–18 are provisionally rejected on the ground of non-
statutory double patenting as unpatentable over claims 1– 16 of copending
Application No. 14/494,620 Gregory (now US 9,353,330 B2; May 31,
2016).
Claims 1–4 and 7–18 are rejected on the ground of double patenting
as unpatentable over claims 1– 7 of Gregory (US 8,067,348 B2; Nov. 29,
2011) in view of Garner (US 2012/0028522).
Claims 1–4 and 7–18 are rejected on the ground of double patenting
as unpatentable over claims 1– 8 of Dodd (US 8,071,517 B2; Dec. 6, 2011)
in view of Garner (US 2012/0028522).
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Claims 1–4 and 7–18 are rejected on the ground of double patenting
as unpatentable over claims 1– 7 of Gregory (US 8,067,276 B2; Dec. 13,
2011) in view of Garner (US 2012/0028522).
Claims 1–4 and 7–18 are rejected on the ground of double patenting
as unpatentable over claims 1– 10 of Hartley (US 8,609,599 B2; Dec. 17,
2013) in view of Garner (US 2012/0028522).
Claims 1–4 and 7–18 are rejected on the ground of double patenting
as unpatentable over claims 1– 10 of Bertram (US 8,703,676 B2; Apr. 22,
2014) in view of Garner (US 2012/0028522).
Claims 1–4 and 7–18 are rejected on the ground of double patenting
as unpatentable over claims 1– 8 of Dodd (US 8,951,944 B2; Feb. 10, 2015)
in view of Garner (US 2012/0028522).
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method of preparing a trunk piston marine engine
lubricating oil composition for a medium-speed four-stroke
compression-ignited marine engine comprising blending (A) a
lubricant additive, in a minor amount, comprising an overbased
metal hydrocarbyl-substituted hydroxybenzoate detergent
dispersed in diluent and (B) an additive comprising a
polyalkenyl substituted carboxylic acid anhydride as active
ingredient dispersed in-a diluent oil containing greater than or
equal to 90 % saturates and less than or equal to 0.03% sulphur
with (C) an oil of lubricating viscosity in a major amount, said
oil of lubricating viscosity having greater than or equal to 90%
saturates and less than or equal to 0.03 % sulphur, wherein
lubricant additive (A) and additive (B) together comprise from
2 to 20 mass% of said lubricating oil composition.
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OPINION2
We review the appealed rejections for error based upon the issues
identified by Appellant 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.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Examiner finds Garner teaches a method of making a trunk piston
engine oil formulated with a major amount of oil of lubricating viscosity
containing at least 50 mass % of the basestock which comprises greater than
or equal to 90% saturates and less than or equal to 0.03% sulfur, and
wherein the composition comprises a minor amount of overbased metal
hydrocarbyl-substituted hydroxybenzoate detergent and at least 1% of a
hydrocarbyl substituted carboxylic acid or anhydride. (Final Act. 3; Garner
¶11.) The Examiner finds Garner teaches the hydrocarbyl substituted
carboxylic anhydride is polyisobutene succinic anhydride which is a
polyalkenyl-substituted carboxylic acid anhydride. (Garner ¶106.) The

2 The Appellant relies on the same arguments for all claims on appeal
(App. Br. 2–9). Therefore, we decide this appeal on the basis of independent
claim 1, which we designate as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 2–4 and 7–18 stand or fall with claim 1.

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Examiner determines Garner teaches the amount of salicylate detergent and
polyisobutene succinic anhydride combination alone, or with other additives,
are present in calculated amounts of from 0.96 to 14.4% which overlaps the
claimed range. (Final Act. 3.)
Appellant argues Garner fails to teach that hydrocarbyl-substituted
carboxylic acid anhydride is present as concentrate (i.e., as mixture of the
anhydride in oil) wherein the oil has 90% saturates content or greater in
which the anhydride additive is dispersed. (App. Br. 5.) Appellant argues
that Garner does not teach that the dispersion of hydrocarbyl-substituted
carboxylic acid anhydride in highly saturated oil provides significant benefit.
(App. Br. 6.)
Appellant’s arguments are not persuasive of reversible error for the
reasons expressed by the Examiner in the Answer. (Ans. 12–13.) Appellant
has not disputed the Examiner’s determination that Garner teaches a method
of making a trunk piston engine oil formulated with amount of salicylate
detergent and polyisobutene succinic anhydride combination alone, or with
other additives, are present in calculated amounts of from 0.96 to 14.4%
which overlaps the claimed range. (Final Act. 3.) As stated above, Garner
teaches a method of making a trunk piston engine oil formulated with a
major amount of oil of lubricating viscosity containing at least 50 mass % of
the basestock which comprises greater than or equal to 90% saturates.
Contrary to Appellant’s arguments, the patentability of an invention does not
require Garner to recognize the advantages discovered by Appellant. See
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir.
1999) (“Where, as here, the result is a necessary consequence of what was
deliberately intended, it is of no import that the Article’s authors did not
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appreciate the results.”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)
(“The fact that appellant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the difference would otherwise have been
obvious.”); see also In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)
(explaining that a chemical composition and its properties are inseparable.).
Appellants argue that the claimed composition possesses significant
benefit over the prior art. (App. Br. 6.) Appellant specifically argues that
the inventive examples demonstrate that compositions having PIBSA
(polyisobutene succinic anhydrides) dispersed in highly saturated oil having
90% or higher saturates content provided superior results. (App. Br. 7.)
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
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on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We adopt the Examiner’s thorough review and explanation of the
deficiencies in Appellants relied upon evidence. (Ans. 14–18.) We add the
following.
Appellant does not direct us to portions of the Specification that
acknowledges the data of Tables 1 and 2 demonstrates unexpected results.
The Specification states “[t]he results show that performance generally
improves as the PIBSA active matter % increases, but that the improvement
is much more significant when the additive diluent is a high saturate oil.”
(Spec. 21.) To show unexpected results, Appellant must not only show that
the invention reflects different results than those of the prior art, but also
“that the difference actually obtained would not have been expected by one
skilled in the art at the time of invention.” In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973) (citations omitted). Appellant has failed to explain why
the results obtained are different from the results that would have been
expected from Garner. Furthermore, it is not clear that the showing to which
Appellant directs our attention compares the claimed invention against the
closest prior art (Garner).
Obviousness double patenting
Claims 1–4 and 7–18 are provisionally rejected on the grounds of
non-statutory obviousness-type double patenting as unpatentable over claims
1– 7 of copending Application No. 14/267, 950 (now US 10,167,440) in
view of Garner; and over claims 1– 16 of copending Application No.
14/494,620 (now US 9,353,330).
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Appellant argues neither co-pending Application 14/267,950; nor
14/494,620 disclose or claim a method of preparing a trunk piston marine
engine lubricating oil composition as specified by the present application.
(App. Br. 7.)
The claims on appeal are directed to (1) a method of preparing a trunk
piston marine engine lubricating oil composition (claim 1); (2) a trunk piston
marine engine lubricating composition (claim 15); and (3) a method of
operating a trunk piston medium-speed compression-ignited marine engine
(claim 16). Appellant’s arguments have not disputed that applications
14/267,950 and 14/494,620 contained claims directed to one or more of the
identified claim subject matter. Appellant has not presented a technical
explanation disputing the Examiner’s determination that the present claims
are patently indistinct from the claims of applications14/267,950 [in view of
Garner] and 14/494,620. As discussed above, Appellant has not established
that the present invention provides an unexpected performance
improvement.
Claims 1–4 and 7–18 are rejected on the grounds of non-statutory
obviousness-type double patenting as unpatentable over claims 1–7 of US
8,067,348 in view of Garner; claims 1–8 of US 8,071,517 in view of Garner;
claims 1–7 of US 8,076,276 in view of Garner; claims 1– 10 of US
8,609,599 in view of Garner; claims 1–10 of US 8,703,676 in view of
Garner; and claims 1–8 of US 8,951,944 in view of Garner.
Appellant’s arguments have not disputed that US patents 8,067,348;
8,071,517; 8,076,276; 8,609,599; 8,703,676; and 8,951,941 contain claims
directed to one or more of the identified claim subject matter. Appellant has
not presented a technical explanation disputing the Examiner’s
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determination that the present claims are patently indistinct from the claims
of US patents 8,067,348; 8,071,517; 8,076,276; 8,609,599; 8,703,676; and
8,951,941 each in view of Garner as explained by the Examiner. As
discussed above, Appellant has not established that the present invention
provides an unexpected performance improvement.
Accordingly, we sustain the Examiner’s obviousness rejections of
claims 1–4 and 7–18 for the reasons presented by the Examiner and given
above.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–18 103 Garner 1–4, 7–18
1–4, 7–18 Non-statutory
Double Patenting
US Application
14/494,620
1–4, 7–18
1–4, 7–18 Non-statutory
Double Patenting
US Application
14/267,950, Garner
1–4, 7–18
1–4, 7–18 Double Patenting
US 8,067,348,
Garner
1–4, 7–18
1–4, 7–18 Double Patenting
US 8,071,517
Garner
1–4, 7–18
1–4, 7–18 Double Patenting
US 8,067,276,
Garner
1–4, 7–18
1–4, 7–18 Double Patenting
US 8,609,599,
Garner
1–4, 7–18
1–4, 7–18 Double Patenting 1–4, 7–18
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
US 8,703,676,
Garner
1–4, 7–18 Double Patenting
US 8,951,944,
Garner
1–4, 7–18
Overall
Outcome
1–4, 7–18

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED