Ex parte Conary et al.

Board of Patent Appeals and Interferences

Oct 20, 1998

08045675 (B.P.A.I. Oct. 20, 1998)

Application for patent filed April 9, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GREGORY S. CONARY and ROLFE J. HARTLEY
____________
Appeal No. 95-5126
Application No. 08/045,6751
____________
ON BRIEF
____________
Before GARRIS, PAK and OWENS, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 23, which are all of the claims
pending in this application.
Appeal No. 95-5126
Application No. 08/045,675
2
THE CLAIMED SUBJECT MATTER
Appellants state that “[t]he rejected claims do not stand
or fall together; [c]laims 1, 14 and 22 are argued separately
below.” See Brief, page 7. Accordingly, for purposes of this
appeal, we will focus on claims 1, 14 and 22, which are
reproduced below:
1. A homogeneous, oil-soluble additive concentrate which
comprises:
a) a minor proportion of diluent oil;
b) from 10 to 30% by weight based on the weight of said
concentrate of an organic sulfur-containing antiwear
and/or extreme pressure agent having a sulfur content of at
least about 20% by weight based on the weight of said
antiwear and/or extreme pressure agent;
c) from 1 to 5% by weight based on the weight of said
concentrate of an ashless dispersant;
d) from 2 to 8% by weight based on the weight of said
concentrate of a dimethyl ester of an aliphatic
phosphonic acid in which the aliphatic group has an average
in the range of about 12 to about 24 carbon atoms;
e) from 10 to 30% by weight of a 3-hydrocarbyl-2,5-
diketopyrro- lidine in which the hydrocarbyl group is an
alkyl or alkenyl group having an average in the range of
about 12 to about 30 carbon atoms, the weight ratio of said
diketopyrrolidine to said dimethyl ester being at least 3:1
and at least sufficient to render said concentrate
homogeneous at temperatures at least as low as 12°C.
Appeal No. 95-5126
Application No. 08/045,675
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14. A gear lubricant composition which comprises a major
amount of oil of lubricating viscosity containing at least the
following components:
b) from 1 to 10% by weight based on the weight of said
lubricant composition of at least one organic
sulfur- containing antiwear and/or extreme pressure
agent having a sulfur content of at least about 20% by
weight based on the weight of said antiwear and/or extreme
pressure agent;
c) from 0.2 to 5% by weight based on the weight of said
lubricant composition of at least one ashless
dispersant;
d) from 0.02 to 1% by weight based on the weight of said
lubricant composition of at least one dimethyl ester
of an aliphatic phosphonic acid in which the aliphatic
group has an average in the range of about 12 to about 24
carbon atoms; and
e) from 0.06 to 4% by weight based on the weight of said
lubricant composition of at least one 3-hydrocarbyl-
2,5- diketopyrrolidine in which the hydrocarbyl group is
an alkyl or alkenyl group having an average in the range
of about 12 to about 30 carbon atoms.
22. The method of improving the low temperature
solubility and compatibility of a dimethyl ester of an
aliphatic phosphonic acid in which the aliphatic group has an
average in the range of about 12 to about 24 carbon atoms in
an additive concentrate that contains at least one organic
sulfur antiwear and/or extreme pressure agent and a minor
amount of diluent oil, which method comprises blending
therewith at least one 3-hydrocarbyl-2,5-diketopyrrolidine in
which the hydrocarbyl group is an alkyl or alkenyl group
having an average in the range of about 12 to about 30 carbon
atoms in an amount such that the weight ratio of said
diketopyrrolidine to said dimethyl ester is at least 3:1.
PRIOR ART
Appeal No. 95-5126
Application No. 08/045,675
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The examiner relies upon the following prior art
references as the evidence of obviousness:
Papay 4,158,633 June 19,
1979
Barber et al. (Barber) 5,126,064 June 30,
1992
Smalheer et al. (Smalheer), Lubricant Additives, The Lezius-
Hill Co., pages 1-11, 1967.
REJECTION
Claims 1 through 23 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined teachings of Barber, Papay
and Smalheer.
DISCUSSION
We have carefully reviewed the entire record, including
all of the arguments advanced by the examiner and appellants
in support of their respective positions. This review leads
us to conclude that only the rejection of claims 14 through 21
is
well-founded. Accordingly, we affirm the examiner’s decision
rejecting claims 14 through 21, but reverse the examiner’s
decision rejecting claims 1 through 13, 22 and 23. Our
reasons for this determination follow.
CLAIMS 14 THROUGH 21
Appeal No. 95-5126
Application No. 08/045,675
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As evidence of obviousness of the subject matter defined
by independent claim 14, the examiner primarily relies on the
Barber and the Papay references. The Barber reference is
directed to a gear lubricant composition. See column 1, lines
4-6. The gear lubricant composition comprises (a) up to a
major amount of a lubricant (see column 1, lines 51 and column
2, line 38 to column 3, line 12); (b) 1 to 20 % by weight of
at least one organic sulfur-containing antiwear and/or extreme
pressure agent having a sulfur content of at least 20% by
weight based on the weight of the antiwear and/or extreme
pressure agent (see column 1, lines 51-53 and column 3, lines
13-34); 0.25 to 15%, desirably 0.05 to
1.5%, by weight of at least one succinimide derivative
friction modifier corresponding to the claimed 3-hydrocarbyl-
2,
5-diketopyrrolidine (compare Barber, column 1, lines 54-65 and
column 6, lines 26 to 65, with appellants’ specification, page
9); (d) at least one ashless dispersant (compare Barber,
column 5 with appellants’ specification, pages 6-9); and (e)
at least one additional friction modifier, such as alkyl or
alkenyl phosphonate (see Barber, column 6, lines 15-19). The
Appeal No. 95-5126
Application No. 08/045,675
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Barber reference at its examples employs about 0.24 to 0.32%
by weight of dimethyl octadecyl phosphonate friction modifier
(DMOP). See columns 7 and 8.
The Barber reference primarily differs from the subject
matter of claim 14 in that it does not specify a dimethyl
ester of an aliphatic phosphonic acid as its alkyl or alkenyl
phosphonate. However, as acknowledged by appellants at page
15 of the Brief, “at column 6, lines 15-18 [of the Barber
reference,] there is a broad suggestion to additionally
incorporate alkyl or alkenyl phosphonates, which generally
include the phosphonates of [the] Papay [reference,] along
with many other additives.” Appellants also acknowledge at
page 15 of the Brief that the Barber reference teaches at its
examples (column 7, lines 20 to column 8, line 18) employing,
as a friction reducing means, dimethyl octadecyl phosphonate
(DMOP) which according to appellant is the claimed dimethyl
ester of an aliphatic phosphonic acid. The Papay reference
also teaches that dimethyl octadecyl phosphonate (DMOP) is the
most preferred friction reducer. See column 1, lines 67-68.
According to the Papay reference, this type of a friction
reducer has been used in gear oil. See column 1, lines 28-31.
Appeal No. 95-5126
Application No. 08/045,675
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Given the above teachings, we agree with the examiner
that it would have been obvious to employ dimethyl octadecyl
phosphonate (DMOP) as the alkyl or alkenyl phosphonate of
Barber’s gear lubricant composition with the reasonable
expectation of imparting an additional friction reducing
means. See also Merck & Co. v. Biocraft Labs., 874 F.2d 804,
807,
10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989); In re Susi, 440 F.2d 442, 444, 169 USPQ 423, 425 (CCPA
1971); In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280
(CCPA 1962).
Appeal No. 95-5126
Application No. 08/045,675
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Appellants do not argue that the amount of the lubricant
or the ashless dispersant recited in claim 14 would not have
been suggested by the applied prior art. See also In re
Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990);
In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980). Rather, appellants take the position that the Barber
reference teaches away from using dimethyl octadecyl
phosphonate (DMOP) or the like as the additional friction
reducing means for Barber’s gear lubricant composition. See
Brief, pages 15 and 16. In support of their position,
appellants refer to the examples at columns 7 and 8 of the
Barber reference. Id. We do not subscribe to appellants’
position.
As indicated by appellants, we recognize that the
examples show that blend 3 containing 0.32 % by weight of
dimethyl octadecyl phosphonate exhibits no reduction in noise
level over the whole aural range as compared to blend 1,
whereas blend 2 containing 0.5% by weight of a preferred
succinimide derivative friction modifier which corresponds to
the claimed 3-hydrocarbyl-2, 5-diketopyrrolidine shows the
Appeal No. 95-5126
Application No. 08/045,675
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reduction in noise level compared to blend 1. See Brief,
pages 15 and 16 in conjunction with Barber, columns 7 and 8.
However, we also note that, by using a small amount of
dimethyl octadecyl phosphonate, blend 3 imparts the same
result as blend 1 even though it uses a less amount of
additives than that required by blend 1 (difference of 0.6 %
by weight of additive package A). See Barber, columns 7 and
8. Moreover, when more additives (additive package A) are
used together with a small amount (0.24 % by weight) of
dimethyl octadecyl phosphonate, the reduction in noise level
is similar to blend 6 containing a succinimide derivative
friction modifier (which corresponds to the claimed 3-
hydrocarbyl-2, 5-diketopyrrolidine) over the whole aural
range, except over 2 kilohertz range. Id. These different
results in the examples comport with the teachings of the
Barber reference, which designate the succinimide derivative
as the main friction reducing means and the alkyl or alkenyl
phosphonate (inclusive of DMOP) as an additional friction
reducing means. See the examples at columns 7 and 8 together
with column 6, lines 15-19. Thus, it is our conclusion that
the Barber and the Papay references as a whole would have led
Appeal No. 95-5126
Application No. 08/045,675
10
a person having ordinary skill in the art to utilize both a
succinimide derivative and an alkyl or alkenyl phosphonate,
such as DMOP, in Barber’s composition with the reasonable
expectation of reducing the friction as indicated supra.
As a rebuttal to the prima facie case of obviousness
regarding the subject matter of claim 14, appellants rely on a
showing reported at page 17, lines 25-26, of the
specification. Specifically, appellants argue (Brief, page
16):
Additional evidence of nonobviousness of the
claimed combination of components in claims 14-21 is
provided in the results reported in the
specification at page 17 line 25-36. A comparative
test between a composition of the invention and the
best competitive proprietary premium gear additive
package on the market at time of filing was run
under the same conditions using the Big Wheel/Little
Wheel test developed by General Motors. The
lubricant of the invention ran 8569 miles before
failure due to chattering. In contrast, the
commercial additive ran only 4056 miles until
failure due to chattering. This test is recognized
by those skilled in the art as the GM Limited Slip
Axle Test procedure (R-4A1-4) and is an important
commercial performance test, with a severe test of
limited slip axle performance from continuous
engagement of the limited slip clutch pack due to
differential wheel rpms from the different size
tires utilized on the axle.
Appeal No. 95-5126
Application No. 08/045,675
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It appears that appellants are taking the position that the
showing establishes that the claimed subject matter imparts
unexpected results.
Upon making a factual inquiry into this showing, we are
of the view that appellants have not met their burden of
establishing unexpected results. See In re Geisler, 116 F.3d
1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
In the first place, we observe that appellants have not
compared the claimed subject matter with the closest prior
art. See In re Baxter Travenol Labs, 952 F.2d 388, 392, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). For the reason
indicated supra, we determine that the composition described
in the Barber reference is much closer to the claimed
composition than that compared in the specification. In the
second place, we note that the showing is not commensurate in
scope with the degree of protection sought by claim 14 on
appeal. See In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983). While the showing is
Appeal No. 95-5126
Application No. 08/045,675
12
limited to combining various specific ingredients to form a
gear lubricant composition (see specification examples 1 and 2
at pages 15 and 16 together with example 12 at page 17
referred to by appellant), claim 14 is not so limited. Claim
14 not only specifically includes a myriad of compounds which
are materially different from the specific compounds employed
in the example referred to by appellant, but also does not
require the presence of various specific ingredients required
by appellant in the example. We find no evidence, and
appellants have not offered any, that the result based on a
single formulation can be reasonably extrapolated to support
the claimed plethora of formulations containing materially
different compounds.
According to appellants, the above showing also
establishes that the subject matter of claim 14 is a
commercial success. See Brief, page 17. On this record,
however, appellants do not provide sufficient information upon
which the examiner could conclude that the claimed subject
matter is commercially successful. There is nothing in the
record to show the market demand for appellants’ gear
lubricant composition; the growth of the market share
Appeal No. 95-5126
Application No. 08/045,675
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regarding appellants’ gear lubricant composition; and the
extent of profitability resulting from the sale of appellants’
gear lubricant composition. Appellants simply fail to meet
their burden of establishing commercial success.
Even were we to conclude that appellants’ unsupported
assertion is sufficient to establish commercial success, we do
not believe that the required nexus is established between the
showing in the specification and the claimed invention. See
Stratoflex Inc. v. Aeroqup corp., supra, at 713 F.2d 1539,
218 USPQ 879 and Cable Electric Products, Inc. v. Genmark,
Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 887-88 (Fed. Cir.
1985). In this regard, we find nothing in the specification
to indicate that the gear lubricant formulation referred to
therein corresponds to the claimed invention for the reasons
indicated supra. It must be emphasized that commercial
success must be due to claimed features, and not due to
unclaimed features (i.e., the evidence of commercial success
must be commensurate in scope with the claims which the
evidence is offered to support).
Appeal No. 95-5126
Application No. 08/045,675
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Joy Technologies Inc. v. Manbeck, 751 F.Supp. 225, 231, 17
USPQ2d 1257, 1260-61 (D.D.C. 1990), aff’d, 959 F.2d 226, 22
USPQ2d 1153, 1156 (Fed. Cir. 1992). Here again appellants
fail to meet their burden of demonstrating the requisite
nexus.
Having considered all of the evidence of record, we
conclude that, on balance, the evidence of obviousness
regarding the subject matter of claim 14 outweighs the
evidence of nonobviousness proffered by appellants.
Accordingly, we affirm the examiner’s decision rejecting
claims 14 through 21 under
35 U.S.C. § 103.
CLAIMS 1 THROUGH 13, 22 AND 23
Claims 1 through 13, 22 and 23, however, are on a
different footing. These claims require, inter alia, that the
weight ratio of a 3-hydrocarbyl-2, 5-diketopyrrolidine to a
dimethyl ester
of an aliphatic phosphonic acid be at least 3:1. See claims 1
and 22. This ratio is said to render the claimed composition
homogeneous at a very low winter-like temperature. See claims
Appeal No. 95-5126
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1 and 22 in conjunction with specification, pages 1 and 2.
The applied prior art, however, does not recognize the
importance
of employing the claimed weight ratio of a 3-hydrocarbyl-2,
5-diketopyrrolidine to a dimethyl ester of an aliphatic
phosphonic acid. The applied prior art is simply devoid of
any suggestion, much less appellant’s suggestion, for
employing the claimed weight ratio of a 3-hydrocarbyl-2, 5-
diketopyrrolidine to a dimethyl ester of an aliphatic
phosphonic acid. Accordingly,
we reverse the examiner’s decision rejecting claims 1 through
13, 22 and 23 under 35 U.S.C. § 103.
CONCLUSION
In summary, we conclude that
(1) the § 103 rejection of claims 14 through 21 is
sustained; and
(2) the § 103 rejection of claims 1 through 13, 22 and 23
is not sustained.
Accordingly, the decision of the examiner is affirmed-in-part.
Appeal No. 95-5126
Application No. 08/045,675
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
jrg
Appeal No. 95-5126
Application No. 08/045,675
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Mr. Dennis H. Rainear
Patent and Trademark Division
Ethyl Corporation
330 South Fourth Street
Richmond, VA 23219
JENINE GILLIS
Appeal No. 95-5126
Serial No.
08/045,675

Judge PAK
Judge OWENS
Judge GARRIS
Received: 13 Oct 98
Typed: 14 Oct
98
DECISION: AFFIRMED-IN-
PART

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1111
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk (FOIA): ____
Appeal No. 95-5126
Application No. 08/045,675
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Updated Monthly Report: ___