Ex Parte Boons

Patent Trials and Appeals Board

Apr 15, 2019

14534444 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/534,444 11/06/2014
14322 7590 04/17/2019
Michael E. Carmen, Esq.
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
FIRST NAMED INVENTOR
Cornelis H.M. Boons
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.
T-8891A (538-259) 6780
EXAMINER
V ASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
04/17/2019 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):
nyoffice@rml-law.com
mec@rml-law.com
bmg@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIS H.M. BOONS
Appeal2018-003865
Application 14/534,444
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, and 5-24 of Application
14/534,444 under 35 U.S.C. § 103 as obvious. Final Act. 1, 3-5 (Nov. 21,
2016). Appellant seeks reversal of the rejections pursuant to 35 U.S.C.
§ 134(a). 1 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm-in-part.
1 Chevron Oronite Technology B.V. is identified as the Applicant and the
real party in interest. Appeal Br. 2.
Appeal2018-003865
Application 14/534,444
BACKGROUND
The '444 Application describes a marine diesel cylinder lubricating
oil composition for lubricating a marine two-stroke crosshead diesel cylinder
engine. Spec. ,r 2.
Claims 1 and 18 are representative of the '444 Application's claims
and is reproduced below from the Claims Appendix to the Appeal Brief
( emphasis added):
1. A marine diesel cylinder lubricating oil composition
which comprises (a) a major amount of one or more Group II
basestocks, and (b) a detergent composition comprising (i) one
or more alkaline earth metal salts of an alkyl-substituted
hydroxyaromatic carboxylic acid having a total base number
(TBN) of about 100 to about 250, and (ii) one or more of a high
overbased alkyl aromatic sulfonic acids or salts thereof;
wherein the aromatic moiety of the alkyl aromatic sulfonic
acids or salts thereof contains no hydroxyl groups; and wherein
the marine diesel cylinder lubricating oil composition has a
TBN of about 5 to about 120.
18. A method for lubricating a marine two-stroke cross head
diesel engine with a marine diesel cylinder lubricant
composition having improved high temperature detergency;
wherein the method comprises operating the engine with a
marine diesel cylinder lubricating oil composition comprising
(a) a major amount of one or more Group II basestocks, and (b)
a detergent composition comprising (i) one or more alkaline
earth metal salts of an alkyl-substituted hydroxyaromatic
carboxylic acid having a TBN of about 100 to about 250, and
(ii) one or more high overbased alkyl aromatic sulfonic acids or
salts thereof; wherein the aromatic moiety of the alkyl aromatic
sulfonic acids or salts thereof contains no hydroxyl groups; and
wherein the marine diesel cylinder lubricating oil composition
has a TBN of about 5 to about 120.
Appeal Br. 15, 18 (Claims App.).
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Application 14/534,444
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 5-11, 14--18, and 20-24 are rejected2 under
35 U.S.C. § 103 as unpatentable over Jukes. 3 Final Act. 3;
Answer 3.
2. Claims 12, 13, and 18 are rejected4 under 35 U.S.C. § 103 as
unpatentable over the combination of Jukes and Le Coent. 5
Answer 5.
3. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Jukes and Verlinde. 6 Final Act. 5;
Answer 6.
2 The Examiner's statement of Rejection 1 omitted pending claim 2 and
included claim 4. Final Act. 1, 3; Answer 3. Appellant, however, canceled
claim 4 by Amendment filed June 20, 2016. Thus, claim 4 is no longer
pending. Final Act. 1. Accordingly, we view the Examiner's omission of
claim 2 and inclusion of claim 4 in Rejection 1 as a clerical error.
3 US 2011/0077182 Al, published Mar. 31, 2011.
4 The Examiner's statement of Rejection 2 in the Answer omitted claims 1,
4--11, 14--17, and 20-24. Answer 5. These claims, however, were included
in the Examiner's statement of Rejection 2 in the Final Office Action.
Compare Final Act. 4 with Answer 5. Accordingly, we view the Examiner's
inclusion of claims 1, 4--11, 14--1 7, and 20-24 in the Examiner's statement
of Rejection 2 in the Final Office Action as a clerical error.
5 US 6,479,440 Bl, issued Nov. 12, 2002.
6 US 2009/0156440 Al, published June 18, 2009.
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Application 14/534,444
DISCUSSION
Appellant challenges each of these rejections by asserting that "one
skilled in the art would not look to [Jukes'] system oil ... as a starting point
to formulate the presently claimed marine diesel cylinder lubricating oil
composition." See, e.g., Appeal Br. 12, 13. Appellant thus argues for
reversal of the Examiner's rejections on the basis of limitations present in
independent claims 1 and 18. 7 See generally id. at 2-13; Reply Br. 1-7.
We select claims 1 and 18 as representative. Accordingly, we limit
our discussion to claims 1 and 18 with the understanding that it applies with
equal force to independent claim 24 on appeal. Claims 2, 5-17, and 19-23
will stand or fall with each of their respective independent claims. 37 C.F.R.
§ 4I.37(c)(l)(iv). We address Appellant's arguments for reversal of claims
1 and 18 in tum.
Claim 1. In rejecting claim 1, the Examiner found that Jukes discloses
or suggests each limitation of the claimed marine diesel two-stroke cross-
head cylinder lubricant. Final Act. 3 (citing Jukes ,r,r 46, 80, 109, 170, 131,
143-153).
According to Appellant, however, it is conventional that
the cylinders of a crosshead engine are lubricated with a
[ marine diesel cylinder lubricant] and the crankcase of the
crosshead engine is lubricated using a separate lubricating oil
composition referred to as a "system oil[."] The 2-stroke
crosshead engine[,] therefore[,] must have two separate oils,
7 Appellant's Brief repeats the Examiner's statement of Rejection 1 and
Rejection 2 from the Final Office Action. Appeal Br. 5. We, however,
view the Examiner's omission of claim 2 and inclusion of claim 4 in
Rejection 1 as a clerical error. See supra fn.2. There is no dispute that the
presently appealed claims are 1, 2, and 5-24. See Final Act. 1; Appeal Br. 2;
Reply Br. 1.
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Appeal2018-003865
Application 14/534,444
i.e., one oil for the crankcase and one oil for the cylinders, and
these two oils are formulated differently. A cylinder oil is a
"total loss" oil and[,] therefore[,] does not have to be
formulated to last for an extended period of time as it is
consumed almost immediately, whereas a crankcase lubricant,
i.e., a system oil, is formulated to last as long as possible for
extended drain intervals.
Appeal Br. 5---6. See also generally the Declaration of Ronald Jukes under
37 C.F.R. § 1.132 ("Jukes Declaration") and Mortier et al., CHEMISTRY
and TECHNOLOGY of LUBRICANTS, 2nd ed., 295-96 (1997) ("Mortier")
( each proffered as evidence "that a marine diesel cylinder lubricant and a
system oil have conventionally comprised different compositions."). Appeal
Br. 8.
Based on this conventional distinction between a cylinder oil and a
system oil, Appellant argues that the rejection of claim 1 should be reversed
because: (1) "Jukes discloses a system oil[,] whereas the presently claimed
invention is a marine diesel cylinder lubricating oil composition," id. at 5;
(2) Jukes teaches away from the claimed composition by disclosing "in his
definition of a 'marine system oil' that 'the firing cylinder and the crankcase
are lubricated separately by a cylinder oil and a marine system oil,
respectively,"' id. at 9 ( citing Jukes ,r 68); (3) the Examiner has not
established that Jukes discloses or suggests high overbased alkyl aromatic
sulfonic acids or salts thereof, wherein the aromatic moiety of the alkyl
aromatic sulfonic acids or salts thereof contains no hydroxyl groups, Reply
Br. 2; and ( 4) "the claimed limitation 'marine diesel cylinder lubricating oil
composition' is in the body of the claim and[,] therefore[,] entitled to
patentable weight." Id. at 3.
Appellant's arguments are not persuasive.
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Application 14/534,444
First, arguments (1) and (2) fail to identify reversible error in the
Examiner's findings that Jukes discloses a composition comprising the same
Group II base oil and detergent additive as claimed. As the Examiner found,
Jukes' marine diesel cylinder lubricating oil features total base numbers
("TBN"), which are encompassed by or overlap the claimed TBN ranges.
Answer 7; see also Final Act. 3 (citing Jukes ,r,r 153, 170). This is sufficient
to create a prima facie case of obviousness. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art). This prima facie case of obviousness can be
overcome if Appellant shows either (i) that the prior art teaches away from
the claimed invention or (ii) that there are new and unexpected results
relative to the closest prior art. Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1322 (Fed. Cir. 2004) (citing In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990)).
Appellant's rebuttal argument (2) asserts that Jukes teaches away by
disclosing that a firing cylinder is lubricated by a cylinder oil, whereas a
crankcase is lubricated by a separate marine system oil. Appeal Br. 9 ( citing
Jukes ,r 68). The preponderance of the evidence, however, weighs in favor
of the Examiner's findings that Jukes discloses each component and
requisite feature of the claimed lubricant composition. See Para-Ordnance
Mfg., Inc. v. SGS Imps. Int'!, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995)
( explaining that the teachings of a reference that arguably teaches away from
a claimed feature must be weighed alongside the teachings of a cited
reference that teaches the propriety of employing that feature).
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Application 14/534,444
We, furthermore, are not persuaded that Appellant rebuts any prima
facie case by demonstrating that the subject matter of claim 1 provides
unexpected results.
[F]or a showing of "unexpected results" to be probative
evidence of non-obviousness, it falls upon the applicant to at
least establish: ( 1) that there actually is a difference between the
results obtained through the claimed invention and those of the
prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972);
and (2) that the difference actually obtained would not have
been expected by one skilled in the art at the time of invention,
Id.; In re D'Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971)[.]
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (italics added). As the
Examiner found, Appellant has not compared the claimed composition, nor
the exemplified embodiments, with the closest prior art composition of
Jukes. Answer 8.
Thus, the Examiner has properly established a prima facie case of
obviousness, and Appellant has not presented sufficient evidence or
argument to rebut that case.
Second, argument (3) is not persuasive because Appellant raises new
arguments against the Examiner's findings regarding Jukes' teachings for
the first time in the Reply Brief. Reply Br. 1-2. These arguments are
untimely. We, therefore, will not consider them. Ex parte Nakashima, 93
USPQ2d 1834 (BP AI 2010) (informative) ( explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
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Application 14/534,444
that has not been addressed by the Examiner, absent a showing of good
cause.").
Fourth, the preamble and body of claim 1 recite "[a] marine diesel
cylinder lubricating oil composition." Appellant's argument ( 4) asserts that
the Examiner erred by failing to give weight to these recitations. Reply Br.
3. We are not persuaded by this argument.
In general, the preamble limits a claim if it recites essential structure,
essential steps, or is otherwise "necessary to give life, meaning, and vitality"
to the claim, Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quotingKropa v. Robie, 187 F.2d 150, 152 (CCPA
19 51) ), while the preamble is not limiting when the claim body defines a
complete invention "such that deletion of the preamble phrase does not
affect the ... steps of the claimed invention," Catalina Mktg. Int 'l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). The default
presumption is that a claim's preamble is not limiting. Am. Med. Sys., Inc. v.
Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) ("'Generally,' we have
said, 'the preamble does not limit the claims."' ( quoting Allen Eng 'g Corp.
v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))).
In this case, claim 1 is drawn to a composition of matter. Thus,
deletion of the preamble phrase and the same phrase within the body cannot
affect any claimed steps, which are absent from claim 1. Furthermore,
neither of these phrases recites any essential structure. Thus, the phrase at
issue is not "necessary to give life, meaning, and vitality" to claim 1. Pitney
Bowes, 182 F.3d at 1305. We, therefore, conclude that the recitation of"[a]
marine diesel cylinder lubricating oil composition" is not a positive claim
limitation.
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Appeal2018-003865
Application 14/534,444
In view of the foregoing, we affirm the Examiner's Rejection 1 of
claims 1 and 24.
Appellant argues that neither Le Coent nor Verlinde cures Jukes'
alleged deficiency with respect to the claimed marine diesel cylinder
lubricating oil composition. Appeal Br. 12, 13. Having found no such
deficiencies, we affirm Rejection 1 and Rejection 2 of claims 2, 5-17, and
22, which ultimately depend from claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 18. In rejecting claim 18, the Examiner found that Jukes
discloses or suggests the requisite step of operating a marine two-stroke
crosshead diesel engine with a cylinder lubricant. Final Act. 3 ( citing Jukes
,r,r 46, 80, 109, 170, 131, 143-153).
Appellant argues that one of ordinary skill in the art would have
known "that the cylinders of a crosshead engine are lubricated with a
cylinder lubricant," whereas "the crankcase of the crosshead engine is
lubricated using a system oil." Appeal Br. 10 ( emphasis added). Appellant
proffers the Jukes Declaration, which states that "one skilled in the art would
normally not consider using the same lubricant composition in both a
cylinder as well as the crankcase of a marine diesel crosshead engine."
Jukes Declaration 2 ( emphasis added). According to Appellant, Jukes
supports this position by disclosing "in his definition of a 'marine system
oil[,]' that 'the firing cylinder and the crankcase are lubricated separately by
a cylinder oil and a marine system oil, respectively."' Appeal Br. 9 ( citing
Jukes ,r 68) ( emphasis added).
Appellant's arguments are persuasive that the Jukes Declaration and
Jukes provide evidence supporting that the ordinarily skilled artisan would
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Application 14/534,444
have understood that a system oil is not used as a cylinder lubricant. s, 9 We,
therefore, cannot sustain the Examiner's rejections of method claim 18 under
§ 103.
In view of the foregoing, we reverse the Examiner's Rejection 1 and
Rejection 2 of claim 18. Thus, we also reverse Rejection 1 and Rejection 3
of claims 19-21 and 23, which ultimately depend from claim 18. 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
For the reasons set forth above, we affirm-in-part the obviousness
rejections of claims 1, 2, and 5-24 of the '444 Application. In particular, we
affirm the rejections of claims 1, 2, 5-1 7, 22, and 24. We reverse the
rejections of claims 18-21 and 23.
8 We find that Appellant's proffered evidence, when viewed as a whole,
outweighs the Examiner's finding of an instance in which an oil composition
was used to lubricate a marine diesel engine's cylinder and crankcase. See
Answer 7-8 (citing Jukes ,r 13); see also US 8,377,857 B2 Abstract.
9 To the extent the Examiner found for the first time in the Answer that Le
Coent's use of a marine engine oil composition in a trunk piston teaches or
suggests the claimed method (Answer 5), the Examiner has not articulated
why this would have motivated the ordinarily skilled artisan to modify how
Jukes' modified composition is used. Specifically, the Examiner has not
adequately explained why or how Le Coent's alkaline earth alkylaryl
sulfonate, having a TBN of at least 250, would have suggested that Jukes'
composition in a marine two-stroke crosshead diesel engine can lubricate the
cylinders, rather than the crankcase.
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Application 14/534,444
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-IN-PART
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