11637346 (B.P.A.I. May. 16, 2012)

Ex Parte Baillargeon

Board of Patent Appeals and InterferencesMay 16, 2012

11637346 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/637,346 12/12/2006 David J. Baillargeon JJA-0617 2202 7590 05/16/2012 ExxonMobil Research and Engineering Company P.O. Box 900 Annandale, NJ 08801-0900 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 05/16/2012 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 DAVID J. BAILLARGEON ________________ Appeal 2011-000818 Application 11/637,346 Technology Center 1700 ________________ Before CHUNG K. PAK, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-38, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant’s “invention is directed to lubricant base oils/base stocks used to produce formulated lubricants containing performance additives” (Spec. 1:10-11). Claim 15 is illustrative: Appeal 2011-000818 Application 11/637,346 2 15. A lubricating oil stock of improved solvency comprising a mixture of a base oil comprising one or more hydrodewaxate base stock(s) and/or base oil(s), one or more hydroisomerate base stock(s) and/or base oil(s), GTL base stock(s) and/or base oil(s), or mixtures thereof and 1 to 55 wt% of a high viscosity Group I mineral oil, said Group I mineral oil being characterized as having a kinematic viscosity at 100°C of about 12 mm2/s and higher whereby the solvency of the mixture is improved as evidenced by the mixture having an aniline point below the aniline point of the hydrodewaxate base stock(s) and/or base oil(s), hydroisomerate base stock(s) and/or base oil(s), GTL base stock(s) and/or base oil(s) or mixtures thereof and below the linear average of the aniline points of the high viscosity Group I mineral oil and the hydrodewaxate base stock(s) and/or base oil(s), hydroisomerate base stock(s) and/or base oil(s), GTL base stock(s) and/or base oil(s) and mixtures thereof. The References Briens US 4,406,771 Sep. 27, 1983 Rosenbaum US 2004/0178118 A1 Sep. 16, 2004 Alexander WO 2004/053030 A2 Jun. 24, 2002 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 4, 6, 7, 10, 13-21, 23-29 and 31-37 over Alexander in view of Rosenbaum, and claims 5, 8, 9, 11, 12, 22, 30 and 38 over Alexander in view of Rosenbaum and Briens. OPINION We reverse the rejections. We need to address only the independent claims (1, 15, 23 and 31). Those claims require one or more specified base stocks, base oils and mixtures thereof in combination with a high viscosity Appeal 2011-000818 Application 11/637,346 3 Group I mineral oil having a kinematic viscosity at 100 ºC of about 12 mm2/s or higher.1 The Examiner has the initial burden of establishing a prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The Examiner relies upon Rosenbaum’s Fischer-Tropsch-derived bright stock having a kinematic viscosity at 100 ºC of about 15 cSt (mm2/s) to about 40 cSt (¶ 0013) as corresponding to the Appellant’s high viscosity Group I mineral oil (Ans. 4). The Appellant argues that Rosenbaum’s Fischer-Tropsch-derived bright stock is not a Group I mineral oil (Br. 23, 28-29). The record supports the Appellant’s argument. Alexander teaches that a Group 1 base stock is a solvent-extracted mineral oil (p. 3), whereas Rosenbaum teaches that the Fischer-Tropsch-derived bright stock is a highly refined and dewaxed bottoms fraction from a Fischer-Tropsch synthesis of liquid and gaseous hydrocarbons formed by contacting hydrogen and carbon monoxide with a Fischer-Tropsch catalyst (¶¶0013, 0024, 0027). The Examiner argues that “if any material that possesses a property such that it may be used for a purpose, irrespective of what the material is called, and the composition and properties are the same, the materials read upon on[e] another, thus no distinction is seen to exist” (Ans. 25-26). 1 The Examiner does not rely upon Briens for any disclosure that remedies the deficiency in Alexander and Rosenbaum as to the independent claims (Ans. 6-7). Appeal 2011-000818 Application 11/637,346 4 That argument is not well taken because the Examiner has not established that Group I mineral oil and Rosenbaum’s Fischer-Tropsch- derived bright stock have the same composition and properties. The Examiner alternatively argues that Rosenbaum’s Fischer- Tropsch-derived bright stock corresponds to the Appellant’s GTL (gas-to- liquid) base stock or oil (Spec. 1:21-22), and that Rosenbaum discloses a combination of the Fischer-Tropsch-derived bright stock with a conventional neutral Group I base oil (¶ 0017) (Ans. 22). As indicated by the Appellants (Br. 27), the Examiner has not established that Rosenbaum would have fairly suggested, to one of ordinary skill in the art, the Fischer-Tropsch-derived bright stock in combination with a Group I mineral oil having a kinematic viscosity at 100 ºC of about 12 mm2/s or higher. The conventional Group I light neutral base oil disclosed by Rosenbaum has a kinematic viscosity at 100 ºC generally between 3.8 and 4.7 mm2/s (¶ 0007). Thus, the Examiner has not carried the burden of establishing a prima facie case of obviousness of the Appellant’s claimed invention. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-4, 6, 7, 10, 13-21, 23-29 and 31-37 over Alexander in view of Rosenbaum, and claims 5, 8, 9, 11, 12, 22, 30 and 38 over Alexander in view of Rosenbaum and Briens are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED kmm