Ex Parte Blizzard

Patent Trial and Appeal Board

Aug 13, 2018

13967854 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/967,854 08/15/2013
8131 7590 08/14/2018
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
FIRST NAMED INVENTOR
John D. Blizzard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MSH-848 5599
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
08/14/2018 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 JOHN D. BLIZZARD
Appeal2017-008653
Application 13/967,854
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1---6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed August 15, 2013
("Spec."); the Final Action mailed January 4, 2016 ("Final Act."); the
Appeal Brief filed July 7, 2016 ("Br."); and the Examiner's Answer mailed
November 17, 2016 ("Ans."). Appellant did not file a Reply Brief.
2 Appellant is the applicant and real party in interest. Br. 1.
Appeal2017-008653
Application 13/967,854
The claims are directed to oil compositions comprising compressor
oil. Independent claims 1 and 6, reproduced below from the Claims
Appendix of the Appeal Brief, are illustrative of the claimed subject matter:
1. An oil, said oil comprised of
a. compressor oil;
b. a material selected from the group consisting of:
1. an organic phosphate and
11. a mixture of organic phosphates, and,
c. a hydrotreated heavy naphthenic distillate.
6. An oil, said oil comprising:
a. a compressor oil;
b. a material selected from the group consisting of:
an organic phosphate and
a mixture of organic phosphates, and,
c. at least one [h ]ydrotreated heavy naphthenic
distillate;
d. at least one polycarboxylate based natural fatty
acid;
e. at least one antioxidant;
f. at least one corrosion inhibitor, and,
g. at least one non-ferrous metal deactivator.
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Appeal2017-008653
Application 13/967,854
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Turner
Shimomura et al.
("Shimomura")
Kamimura
us 5,714,083
US 7,045,490 B2
US 2010/0008810 Al
REJECTIONS
Feb.3, 1998
May 16, 2006
Jan. 14,2010
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C. § I03(a): (1) claims 1 and 3-5 over Kamimura
alone or in view of Turner; and (2) claims 1-6 over Kamimura alone, or in
view of Turner, and in combination with Shimomura. Final Act. 3---6; Br. 3-
4.
OPINION
The Examiner finds that Kamimura alone or in combination with
Turner teaches all limitations of claims 1 and 3-5. Final Act. 3--4.
Appellant does not argue any of the claims separately. Br. 3--4. We select
claim 1 as representative of claims 1 and 3-5. 37 C.F.R. § 41.37( c)(l )(iv).
Claims 3-5 will stand or fall with claim 1.
The Examiner finds that Kamimura discloses a lubricating oil
composition for a rotary gas compressor that comprises a base oil, at least
one phosphorus extreme pressure agent, and an antioxidant. Final Act. 3;
Ans. 2. The base oil may include naphthenic base oils which can be
obtained by processes including hydrorefining of crude oils, thus Kamimura
allows for the addition of hydrotreated naphthenic distillate base oils to the
compressor oil composition. Ans. 2 ( citing Kamimura ,r 18). The Examiner
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Appeal2017-008653
Application 13/967,854
finds that Kamimura's disclosure of naphthenic base oils includes both
heavy and light naphthenic distillate base oils. Id. The Examiner finds that
Turner teaches that severely hydrotreated light naphthenic distillates may be
added to lubricating oil compositions. Id. at 2-3.
Appellant argues that Kamimura teaches naphthenic base oils are an
alternative base oil, not an additive to a base oil. Br. 3. Appellant also
argues that there is no evidence in Kamimura with regard to which oils to
mix and the benefits to be derived therefrom. Id. Appellant further argues
that the "invention does not deal with severely treated light naphthenic
distillates," and "does deal with hydrotreated heavy naphthenic distillates,"
thus Turner cannot be relied on to support the rejection of claims based on
Kamimura. Br. 4.
We find Appellant's arguments unpersuasive of error by the
Examiner. Kamimura teaches compressor oils, and that the compressor oils
may include paraffinic and naphthenic base oils. Kamimura ,r 17. The
naphthenic oil may be obtaining by subjecting a lubricating oil fraction
produced by atmospheric- and vacuum-distillation of a crude oil, to any
suitable combination of refining processes, including hydrorefining. Id. at
,r 18. Kamimura teaches that two or more base oils may be mixed, thus a
combination of a compressor oil and a hydrotreated naphthenic distillate is
disclosed by the reference. See id. at ,r 20. Moreover, one of ordinary skill
in the art would view Kamimura's disclosure of hydrotreated naphthenic
distillates as broadly encompassing the "heavy" naphthenic distillate of
claim 1. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton."); see also In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir.
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Appeal2017-008653
Application 13/967,854
1992) (reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom); In re Mercier, 515 F .2d 1161, 1165 (CCP A
1975) ("[A]ll of the relevant teachings of the cited references must be
considered in determining what they fairly teach to one having ordinary skill
in the art."). And, because Kamimura teaches both compressor oil and
hydrotreated naphthenic distillate, we need not discuss the Examiner's
reliance on Turner.
We sustain the Examiner's rejection of claim 1 over Kamimura.
Appellant does not make a substantive argument for patentability of claims
3-5 separate from the argument regarding claim 1. Therefore, we also
sustain the rejection of claims 3-5.
The Examiner rejects claims 1---6 over Kamimura alone, or in further
view of Turner in combination with Shimomura. Final Act. 5.
Appellant's only argument relating to claims 1-6 is that claim 1 "does
not deal with (i) polycarboxylate based natural fatty acid, and (ii) a mixture
of polycarboxylate based natural fatty acids and therefore, the rejection of
claim 1 under this set of references is untenable." Br. 4.
As explained above, we sustain the Examiner's rejection of claim 1
over Kamimura. Claims 2 and 6 require polycarboxylate based natural fatty
acids. See Br. 6, 7. The Examiner relies on Shimomura for disclosure of
polycarboxylate based natural fatty acids (Final Act. 5), but Appellant does
not address Shimomura and whether it is combinable with Kamimura.
Appellant thus waives any complaint regarding the combined references.
See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(citingHyattv. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) for the
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Appeal2017-008653
Application 13/967,854
proposition that the Board may treat arguments appellant failed to make as
waived).
We sustain the rejection of claims 1---6 over Kamimura in view of
Turner and Shimomura.
DECISION
The rejection of claims 1---6 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(a)(l)(iv).
AFFIRMED
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