Ex Parte Boffa

Patent Trial and Appeal Board

Oct 18, 2012

11435698 (P.T.A.B. Oct. 18, 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.
11/435,698 05/16/2006 Alexander B. Boffa T-5999C 6942
55741 7590 10/18/2012
M. CARMEN & ASSOCIATES, PLLC
1201 RXR Plaza
Uniondale, NY 11556
EXAMINER
VASISTH, VISHAL V
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
10/18/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte ALEXANDER B. BOFFA
____________

Appeal 2011-006848
Application 11/435,698
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON REHEARING

Appellant requests rehearing of the Decision on Appeal mailed
July 30, 2012 (“Decision”), affirming the rejections of claims 1 and 3-10
directed to a lubricating oil composition for internal combustion engines.
Request for Rehearing (“Rehearing Request”) under 37 C.F.R. § 41.52 filed
October 1, 2012. Appellant seeks reversal of the following rejections under
35 U.S.C. § 103(a): (1) Claims 1, 3, 4, and 6-10 over Nakazato; and (2)
claims 1 and 3-10 over Nakazato in view of Shaub. Id. at 1.
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Application 11/435,698

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We have reconsidered our decision in light of the arguments presented
in the Rehearing Request and, for the reasons stated in our original decision
reiterated below, are not persuaded that we misapprehended or overlooked
any arguments that justify a different outcome in this appeal. Accordingly,
Appellant’s request for a modification of the Decision is DENIED.

ANALYSIS
In the Decision we sustained the Examiner’s finding that Appellant’s
evidence of unexpected results relates “to examples that contain additives
that are not specified in claim 1, and therefore, the data is not commensurate
with the scope of claim 1.” Decision 8 (citing Ans. 11 (example oils contain
“viscosity index improver, overbased detergents, antifoam agents or other
additives” that are not recited in claim 1)). Appellant contends that “each of
the examples contained the same additives and in the same amounts, thereby
acting as a control.” Rehearing Request 3. We agree with Appellant that the
additives are included in both Comparative Examples C and D (comprising
no hydrated alkali metal borate) and Examples 2A and 2B (comprising
hydrated alkali metal borate). Spec. 28-29. However, we have no way of
knowing whether the additives act “as a control” such that any effect
attributable to the additives drops out of the analysis. Ibid. For example, the
results reported for Examples 2A and 2B may flow from the claimed borate
alone, or from an interaction between the borate and one or more unclaimed
additive. Appellant does not satisfy their burden of showing that the same
effects are obtained when these additives are not present. Alternatively,
Appellant does not reasonably limit the claims to require these additives. On
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Application 11/435,698

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this record, we agree with the Examiner that the data is not commensurate in
scope with claim 1. Ans. 11.
Nor does the data fairly represent the closest prior art, namely, the
composition of Nakazato that comprises “a dispersed, hydrated alkali metal
borate” in a range “from 0.01 to 5.0 wt. %” and a total phosphorus
concentration of “from 0.01 to 0.1 wt%.” Ans. 6 (citing Nakazato Abstract
(disclosing phosphorus content) and ¶¶ [0051, 0053] (disclosing hydrated
alkali metal borate content)). Comparative Examples C and D contain no
“hydrated alkali metal borate,” and thus are not comparable to Nakazato’s
borate-containing composition. Rehearing Request 3; see Spec. 28:13-16
(Comparative Examples C and D “did not include any dispersed, hydrated
alkali metal borate”); Nakazato ¶ [0051] (disclosing a “lubricating oil
composition” that may contain “a hydrated alkali metal borate in an amount
of not more than 5 wt. %, particularly, 0.01 to 5.0 wt. %”) and ¶ [0053]
(describing benefits of using hydrated alkali metal borate as an additive).
Appellant’s further contention that Example 2B fairly represents the
closest prior art composition is similarly unpersuasive. The composition of
Example 2B contains “0.095 weight percent phosphorus,” representing the
higher end of the phosphorus range disclosed in Nakazato. Spec. 28:24;
Nakazato Abstract. However, as the Examiner finds without objection from
Appellant, Nakazato discloses a total phosphorus content that ranges from
0.01 to 0.1 wt. %, which substantially overlaps the specified range of “no
more than about 0.05 weight percent.” Claim 1; Ans. 6 (citing Nakazato
Abstract). None of the examples fairly represent a composition comprising
phosphorus at the lower end of the range disclosed in Nakazato, for
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Application 11/435,698

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example, at about 0.01 weight percent, which falls squarely within the range
of “no more than about 0.05 weight percent” that is specified in claim 1. Id.
We place no unfair burden on Appellant by requiring that the data
advanced as evidence of nonobviousness include an example that is truly
comparable to the closest prior art composition disclosed in Nakazato. See,
e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art.”
(citation omitted); In re Burckel, 592 F.2d 1175, 1179-80 (CCPA 1979) (the
claimed subject matter must be compared with the closest prior art in a
manner which addresses the thrust of the rejection).
Appellant appears to argue that, even if Nakazato broadly suggests a
composition comprising dispersed, hydrated alkali metal borate and low-
levels of phosphorous in ranges that overlap those specified in claim 1,
nothing in the reference would have led an ordinary artisan to “expect such a
clear synergy” between the borate and low-levels of phosphorus. Rehearing
Request 5-6. The data upon which Appellant relies to establish that synergy,
however, is limited to a single example representing one low phosphorus
content (300 ppm) and one alkali metal borate content (2.0 wt. %).
Rehearing Request 4-5 (explaining that Example 2B, comprising 950 ppm of
phosphorus, is a “[c]omparative” example, whereas Example 2A represents
an inventive “reduced” phosphorus content of 300 ppm). Yet claim 1 covers
compositions that comprise a broader range of phosphorus contents (“no
more than about 0.05 weight percent”) and a broader range of alkali metal
borate contents (“from about 0.5 to 2 weight percent.”) Claim 1.
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Application 11/435,698

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The single data point of Example 2A is insufficient to establish
unexpected results over the broader range of compositions encompassed by
claim 1. “Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’” In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792
(CCPA 1971)). Appellant’s evidence falls short of establishing a trend that
would justify extending the probative value of Example 2A over the full
scope of claim 1. Cf. In re Kollman, 595 F.2d 48, 56 (CCPA 1979)
(acknowledging that in some cases several data points may enable an
ordinary artisan “to ascertain a trend in the exemplified data which would
allow him to reasonably extend the probative value thereof”); In re Inland
Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001) (“Inland did not offer
comprehensive test results for the magnetic properties of steel produced
under the ‘574 claims at antimony levels greater than 0.02%.”).

CONCLUSION
The request for rehearing is granted to the extent of reconsidering our
original decision but is denied with respect to making any substantive
changes thereto.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED
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