Chevron Oronite Technology B.V. et al.

Patent Trials and Appeals Board

Mar 2, 2022

2021001289 (P.T.A.B. Mar. 2, 2022)

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. 16/288,481 02/28/2019 Richard Hogendoorn 595100-01051/T-10278B 2415 169154 7590 03/02/2022 Dickinson Wright PLLC - Chevron 2600 W. Big Beaver Rd., Ste. 300 Troy, MI 48084 EXAMINER OLADAPO, TAIWO ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): DWPatents@dickinson-wright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD HOGENDOORN, JEROEN AUGUSTINUS VAN LEEUWEN, and ALEXANDER B. BOFFA Appeal 2021-001289 Application 16/288,481 Technology Center 1700 Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and SHELDON M. McGEE, 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 1-18. 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(a). Appellant identifies the real party in interest as Chevron Oronite Technology B.V. and Chevron Oronite Company LLC. Appeal Br. 1. Appeal 2021-001289 Application 16/288,481 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 having a HTHS viscosity at l50°C in a range of about 1.3 to about 2.9 cP, comprising: a) a major amount of an oil of lubricating viscosity having a kinematic viscosity at 100°C in a range of 1.5 to 6.0 mm2/s; b) a dispersant polymethacrylate (DPMA) VII having a Mw of from 200,000 g/mol to 450,000 g/mol; c) a non-dispersant ethylene-based olefin copolymer viscosity index improver having a Mw of from 50,000 g/mol to 150,000 g/mol and a total ethylene content of about 30 wt% to about 70 wt%.; d) from about 200 to about 1000 ppm of magnesium from a magnesium containing detergent; and wherein the lubricating oil composition is substantially free of molybdenum containing element. REJECTIONS 1. Claims 1-18 are rejected under 35 U.S.C. § 103 as being unpatentable over Martin (US 2013/0090273 A1, published Apr. 11, 2013). 2. Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 13/288,3672.3 2 This appears to be an incorrect application number based upon the unrelated subject matter of U.S. Patent Application No. 13/288,367. Correction of the record is requested. 3 Appellant does not appeal Rejection 2. As a result, we summarily affirm the Examiner’s non-statutory double patenting rejection. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue -- or, more broadly, on a particular Appeal 2021-001289 Application 16/288,481 3 OPINION Appellant presents argument for the patentability of independent claims 1 and 10 as a group, and does not present separate argument for the patentability of any dependent claims. Appeal Br. 11-12. We select claim 1 as representative and the other claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). 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. Rejection 1 We adopt the Examiner’s statement of the rejection made on pages 6- 8 of the Answer. We refer to Appellant’s arguments presented on pages 4-12 of the Appeal Brief. We are unpersuaded by the arguments presented therein for the reasons detailed by the Examiner on pages 9-18 of the Answer. We agree with the Examiner that Appellant’s use of mathematical statistical rejection -- the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). Appeal 2021-001289 Application 16/288,481 4 (probability) calculations to demonstrate that the claimed composition would not be quickly envisaged by persons of ordinary skill in the art is not the standard for demonstrating obviousness of ranges. Ans. 11. We note that when claimed ranges overlap or lie inside ranges disclosed by the prior art for every component in a claim, a prima facie case of obviousness is established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Indeed, the law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In view of the above, we affirm Rejection 1. Rejection 2 We summarily affirm Rejection 2 (see footnote 3, supra). CONCLUSION We affirm the Examiner’s decision. Appeal 2021-001289 Application 16/288,481 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-18 103 Martin 1-18 1-18 Nonstatutory double patenting US 13/288,367 1-18 Overall Outcome 1-18 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED