Ex Parte Bender

Patent Trial and Appeal Board

Apr 27, 2017

13860786 (P.T.A.B. Apr. 27, 2017)

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.
13/860,786 04/11/2013 Jonathan W. BENDER AFTON-1104US 1017
22186 7590 04/28/2017
MENDELSOHN DUNLEAVY, P.C.
1500 JOHN F. KENNEDY BLVD., SUITE 312
PHILADELPHIA, PA 19102
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
04/28/2017 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 JONATHAN W. BENDER
Appeal 2015-003708
Application 13/860,786
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the non-final rejection of
claims 1, 6, 7, 11, 12, 15—20, and 22—25. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b). Oral arguments were heard in this
appeal on April 20, 2017.
We AFFIRM.
Appeal 2015-003708
Application 13/860,786
Appellant’s invention is directed to a lubricant composition (claim 1).
The Specification discloses that the lubricant is used in transmissions, final
drives, and wet brakes and is suitable for off-road applications (Spec. 11).
Claim 1 is illustrative:
1. A lubricant composition comprising:
(i) a base oil,
(ii) at least one ashless component (A) having the
structure P(=S)(SR1)(OR2)(OR3), wherein R1 is -
CH2- CHR4-C(=0)0-R5 or -R6-OC(=0)CH2-CH-
C(=0)0-R7, wherein R2 and R3 are independently
selected from a hydrocarbyl group having 2 to 8
carbon atoms and R4 is H or the same as R2 or R3
and R5, R6 and R7 are independently the same as
R2 or R3;
(iii) at least one component (B) being a metal dialkyl
dithio phosphate salt, wherein the component (B)
comprises at least one zinc dialkyl dithio phosphate
represented by the following formula:
wherein R8 and R9 may be the same or different alkyl groups
containing from 1 to 18 carbon atom, wherein the total of
ashless components (A) provides to the lubricant composition
from 0.035 to 0.065 wt.-% phosphorus based on the total
weight of the lubricant composition and the total of components
(B) provides to the lubricant composition from 0.035 to 0.065
wt.-% phosphorus based on the total weight of the lubricant
composition.
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Appeal 2015-003708
Application 13/860,786
Appellant appeals the following rejections:
1. Claims 1, 6, 7, 11, 12, 15—20, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nagakari (US 2009/0186789 Al,
pub. July 23, 2009) in view of Yagishita (JP 2004-035620 A, pub.
Feb. 5, 2004 as translated).
2. Claims 23—25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nagakari in view of Yagishita, and Baillargeon (US
2007/0142247 Al, pub. June 21, 2007).
With regard to rejection (1), Appellant argues claim 1 only (App. Br.
8—13). With regard to rejection (2), Appellant relies on arguments made
regarding claim 1 and adds additional argument that Baillargeon is non-
analogous art (App. Br. 13—15). Appellant does not argue any specific claim
under rejection (2). We select claim 23 as representative for rejection (2). 37
CFR41.37(c)(iv).
ANALYSIS
REJECTION (1): Claim 1
The Examiner’s findings and conclusions regarding Nagakari and
Yagishita are located on pages 3 to 4 of the Answer.
Appellant argues that Nagakari’s disclosure is directed to lubricants
for steam turbines that use a combination of an amine and an ashless
phosphorus compound (App. Br. 9). Appellant contends that Nagakari does
not use a balance between two phosphorus-containing compounds as
required by claim 1. Id. Appellant argues that Nagakari’s range for the
ashless thiophosphate compound is broad (0.01 to 1 wt%) and includes a
range of 0.00093 to 0.093 wt% phosphorus. (App. Br. 9). Appellant argues
that Nagakari’s preferred range of ashless thiophosphate (i.e., component
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Application 13/860,786
(A) in claim 1) as used in the examples (i.e., 0.01 to 0.1 wt%) corresponds to
a phosphorus content of 0.00093 to 0.0093 wt% that is outside the claimed
range (i.e., 0.035 to 0.065 wt.%) (App. Br. 9). Appellant argues that In re
Baird, 16 F.3d 380 (Fed. Cir. 1994), supports the position that the range of
Nagakari’s dithiophosphate (i.e., 0.01 to 1 wt.% having a phosphorus-
content of 0.0093 to 0.093 wt.%) is so broad that it cannot render obvious
Appellant’s selection of the amount of the dithiophosphate to provide
between 0.035 to 0.065 wt.% phosphorus to the lubricant (Reply Br. 2—3).
Nagakari’s preference for 0.01 to 0.1 wt.% of the ashless
thiophosphate in the lubricant does not detract from Nagakari’s broader
teaching to use from 0.01 to 1 wt.% of the ashless thiophosphate, which
includes a range of phosphorus content that overlaps with the range recited
in claim 1. All disclosures of a reference including non-preferred
embodiments must be considered in the obviousness analysis. In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976). Regarding Appellant’s
contention that Nagakari does not teach a lubricant for off-road vehicles,
claim 1 is not limited to lubricants for “off-road” vehicles. Rather, claim 1
merely recites a “lubricant composition.”
Appellant has not shown that the facts in the present appeal are the
same as or substantially similar to the facts in Baird such that the ruling in
Baird would apply here. Baird involved a claim directed to a flash fusible
toner comprising a binder resin which is a bisphenol A polyester containing
an aliphatic dicarboxylic acid selected from the group consisting of succinic
acid, glutaric acid, and adipic acid. Baird, 16 F.3d at 381. The prior art
taught a flash fusible toner made using a binder with a generic formula. Id.
at 383. The court found that at least 100 million binders may be
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Appeal 2015-003708
Application 13/860,786
encompassed by the prior art generic formula, whereas the claim was limited
to bisphenol A. Id. The court found that though the generic formula in the
prior art encompassed bisphenol A, there was no direction in the prior art to
select the variable to arrive at bisphenol A. Id.
In contrast, Appellant has not alleged or shown that the range of
dithiophosphate material (i.e., 0.01 to 1 wt.% having from 0.00093 to 0.093
wt.% phosphorus) is so vast and includes over 100 million different
compound compositions as was the case in Baird. Rather, Appellant
concedes that Nagakari’s broader range (i.e., 0.01 to 1 wt.% having from
0.00093 to 0.093 wt.% phosphorus) encompasses providing a
dithiophosphate to the lubricant composition in an amount sufficient so that
the phosphorus content contributed to the lubricant from the dithiophosphate
is between 0.035 to 0.065 wt.% phosphorus (Reply Br. 3). Nagakari’s
preference for lesser amounts of the dithiophosphate in the lubricant does
not teach away from Nagakari’s broader teaching to use an amount of the
dithiophosphate in the lubricant so that the phosphorus content contributed
to the lubricant by the dithiophosphate is between 0.035 to 0.065 wt.%.
Appellant argues that Nagakari’s disclosure that zinc dithiophosphate
anti-wear additives may be used are part of a laundry list of anti-wear
additives that include molybdenum and boron compounds (App. Br. 10).
Appellant contends that there is no suggestion or expectation in Nagakari
that the additional anti-wear additives are necessary to solve the lacquer and
sludge problems. Id. Appellant contends that a person of ordinary skill in
the art would have known that adding a metal containing anti-wear additive
would have contributed to sludge formation. Id.
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Appeal 2015-003708
Application 13/860,786
Contrary to Appellant’s argument, Nagakari teaches that anti-wear
additives including zinc dialkyl dithiophosphates may be used in the
lubricant composition (| 74). The Examiner finds that Nagakari’s disclosure
of the anti-wear additives including zinc dialkyl dithiophosphates provides a
reasonable expectation of success in using the anti-wear additive in
Nagakari’s lubricant composition. Appellant has not shown that the list of
anti-wear compounds is so vast that selection and use of a zinc dialkyl
dithiophosphate as recited in claim 1 would not have been obvious to the
ordinarily skilled artisan.
Appellant argues that Nagakari is directed to turbine lubricants and
Yagishita is directed to engine oil lubricants which are entirely different
from one another (App. Br. 10). Appellant contends that because Nagakari
and Yagishita are so unrelated, there is no reasonable expectation that
substituting or modifying Nagakari with Yagishita’s zinc dithiophosphate
would have successfully reduced sludge and lacquer as Nagakari seeks to do
(App. Br. 12). Appellant argues that Yagishita requires the use of an ashless
friction modifier (component C) in the lubricant composition (App. Br. 10).
Appellant contends that Yagishita prefers no zinc dithiophosphate such that
Yagishita would not have led one skilled in the art to select combining an
ash-free phosphorus compound with zinc dithiophosphate in the absence of
component C in order to obtain friction reduction (App. Br. 11). Appellant
contends that using Yagishita’s friction reducing compound C would reduce
the friction too much to make the lubricant useful for off-road use or to
satisfy the Caterpillar TO-4 lubricant test (App. Br. 11—12).
Appellant’s arguments are undermined by the Examiner’s stated
rejection that finds that Nagakari teaches using zinc dialkyl dithiophosphates
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Application 13/860,786
as anti-wear additives in a lubricant composition. The Examiner relies on
Yagishita to teach the phosphorus content of zinc dialkyl dithiophosphates
and how the use of them in Nagakari’s composition would have resulted in a
phosphorus content of the zinc dialkyl dithiophosphate within the claimed
range (Non-Final Act. 4). In other words, using zinc dialkyl dithiophosphate
as the anti-wear additive as taught by Nagakari and Yagishita would have
resulted in an additive having the phosphorus content as required by the
claims. The Examiner is not proposing to combine the entirety of
Yagishita’s lubricant composition with Nagakari’s lubricant. Yagishita’s
use of component C is not required to be combined with Nagakari’s
composition according to the Examiner’s rejections. Nevertheless, claim 1
uses the open-ended claim language “comprising” which does not exclude
having additional components, such as component C. Claim 1, as noted
above, is not limited to its use as an off-road lubricant that meets Caterpiller-
TO-4 requirements. Therefore, Appellant’s unsupported argument that
adding Yagishita’s component C would reduce the friction of the lubricant
too much to conform to the TO-4 requirements is not persuasive.
Yagishita discloses, as admitted by Appellant on page 10 of the
Appeal Brief, that the lubricant composition may be used to lubricate
turbines (Yagishita Tflf 89, 98). Therefore, Yagishita and Nagakari are not
unrelated as argued by Appellant. Moreover, Nagakari’s teaching to use
zinc dialkyl dithiophosphates as anti-wear additives provides a reasonable
expectation that using zinc dialkyl dithiophosphate additives as required by
the claim would have provided a successful lubricant that reduces sludge and
lacquer as sought by Nagakari.
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Application 13/860,786
Appellant also contends that Table 3 on page 18 of the Specification
evinces the criticality of the ranges in claim 1 in that the combination of the
ashless component A and a zinc dialkyl dithiophosphate salt (component B)
yields a lubricant that has acceptable copper corrosion resistance, FZG load
performance and bearing pitting performance that meet the TO-4 standard
(App. Br. 8).
Appellant’s evidence in Table 31, is limited to a single lubricant
composition containing varying amounts of a single compound representing
component A and a single compound representing component B.
Appellant’s claim 1 is much broader than the showing in Table 3.
Component A and Component B in claim 1 include a multitude of different
compounds. In other words, the showing is not commensurate in scope with
the claimed invention. Appellant has not established unexpected results with
the subject matter of claim 1.
On this record, we affirm the Examiner’s § 103 rejection of claims 1,
6, 7, 11, 12, 15-20, and 22.
1 During the hearing Appellant referred to a Declaration by the inventor,
Jonathan Bender (i.e., the Bender Declaration) as explaining the scope of the
evidence in Table 3. The Bender Declaration appears to have been filed on
August 11, 2014 according to our search of the Patent Office’s electronic file
for this application. The Bender Declaration was neither attached to the
Appeal Brief or Reply Brief, nor discussed in either Brief. During oral
argument only arguments made in the Briefs may be presented. We find that
the Bender Declaration is not before us on appeal.
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Appeal 2015-003708
Application 13/860,786
REJECTION (2): Claim 23
Claim 23 recites “the lubricant composition according to claim 1,
further comprising at least one component (C) comprising a thiadiazole or
derivative thereof.”
Appellant argues that the Examiner’s reliance on Baillargeon to teach
the limitation of claim 23 is faulty because Baillargeon is directed to
aviation piston engines which are entirely different than turbine engines as in
Nagakari (App. Br. 13—14). Appellant contends that the Examiner
erroneously concludes based upon that premise that it would have been
obvious to use the particular corrosion inhibitor of Baillargeon in the
lubricant composition of Nagakari as modified by Yagishita (App. Br. 14).
Appellant contends that none of the applied prior art references teaches
using a thiadiazole in a lubricant composition suitable for passing the
Caterpillar TO-4 test. Id. Appellant contends that the Examiner has not
articulated a reason derived solely from the references to make the
combination in order to arrive at the claimed lubricant. Id.
The Examiner relies on Baillargeon to teach using
dimercaptothiadiazoles as corrosion inhibitors in engine lubricants (Non-
Final Act. 7). Appellant asserts that aviation piston engines are different
than turbine engines, but the Examiner relies on Baillargeon to inform
Nagakari’s disclosure to use corrosion inhibitors. In other words,
Baillargeon teaches a suitable corrosion inhibitor for engine lubricants.
Appellant has not shown that the thiadiazole corrosion inhibitor in
Baillargeon’s composition would cease to function as a corrosion inhibitor
in Nagakari’s lubricant composition. Rather, we find that there is a
reasonable expectation that Baillargeon’s thiadiazole corrosion inhibitor
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Application 13/860,786
would have successfully functioned as a corrosion inhibitor in Nagakari’s
lubricant. Contrary to Appellant’s argument that the rejection lacks
articulated reasoning for the combination, the Examiner finds that one of
ordinary skill in the art would have used Baillargeon’s
dimercaptodiathiazole corrosion inhibitor as the thiodiazole inhibitor in
Nagakari’s lubricant to prevent corrosion.
On this record, we affirm the Examiner’s § 103 rejection of claims
23-25.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
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