Ex Parte Costello et al

Board of Patent Appeals and Interferences

Jun 8, 2009

10731600 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL T. COSTELLO, IGOR RIFF,
and JOSEPH A. WEAVER JR.
____________

Appeal 2008-004534
Application 10/731,600
Technology Center 1700
____________

Decided:1 June 08, 2009
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-004534
Application 10/731,600

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 12-18, the only claims pending in the
application. (Appeal Brief (“App. Br.”), filed Oct. 31, 2007, 6.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 12, the sole independent claim, is illustrative of the subject
matter on appeal, and is reproduced from the Claims Appendix to the Appeal
Brief:
12. A lubricant composition comprising:

a) a lubricant oil stock

b) an amorphous overbased alkaline earth metal sulfonate in an
amount sufficient to provide a sedimentation rate of no more than about
0.005% per week at 70°C for at least 12 weeks; and,

c) at least one friction modifier selected from the group consisting of a
polyalkylene succinic anhydride, an overbased alkaline earth carboxylate,
the reaction product of an alkanoamine with a fatty acid or a fatty ester, the
reaction product of thiodiglycol with a fatty acid or a fatty ester and the
reaction product of a dialkylene glycol with a fatty acid or a fatty ester.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Dec. 27, 2007, 3):
Calhoun 3,198,737 Aug. 03, 1965
Papke 4,995,993 Feb. 26, 1991
Papay 5,652,201 Jul. 29, 1997
Hartley 2004/0180798 A1 Sep. 16, 2004
Appellants request review of the following grounds of rejection (App.
Br. 7-8):
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1. claims 12-18 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
2. claims 12-15 under 35 U.S.C. § 103(a) as unpatentable over
Papay in view of Papke;
3. claim 16 under 35 U.S.C. § 103(a) as unpatentable over Papay
in view of Papke as applied to claims 12-15, and further in view of Hartley;
and
4. claims 17-18 under 35 U.S.C. § 103(a) as unpatentable over
Papay in view of Papke as applied to claims 12-15, and further in view of
Calhoun.

Rejection of claims 12-18 under
35 U.S.C. § 112, first paragraph

ISSUES
The Examiner maintains that claim 12 is not supported by the
originally filed Specification because the claimed sedimentation rate of “no
more than about 0.005% per week” encompasses a broader range than
supported by the Specification, which “places a lower bound of about
0.001% per week on the sedimentation rate.” (Ans. 3.) The Examiner also
contends that there is no support for an infinite time period extending
beyond the claimed “at least 12 weeks.” (Ans. 3-4.)
In response, Appellants identify several examples in the Specification
in which sedimentation rates ranging from 0 to 0.005% were measured each
week over a 12 week time period. (Rep. Br. 2 (citing Exs. 6 and 23-27)).
Appellants maintain that one of ordinary skill in the art would understand
from the test data in the Specification that a desirably low sedimentation rate
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would be expected to continue beyond the exemplified 12 week test period.
(Rep. Br. 3.)
Therefore, the first issue we consider is whether Appellants have
shown reversible error in the Examiner’s finding that the claim phrases “a
sedimentation rate of no more than about 0.005% per week” and “at least 12
weeks” do not comply with the written description requirement of the first
paragraph of § 112.
The Examiner also contends that claim 12 is not supported by the
originally filed Specification because there is no evidence of a sedimentation
rate of less than 0.005% per week for a composition containing an
amorphous overbased calcium sulfonate other than C-400CLR and at a
concentration other than 10%. (Ans. 4.) Appellants argue that the use of
other sulfonates and adjustments in the concentrations used to achieve a
sedimentation rate within the claimed range would have been within the skill
of the ordinary artisan. (Rep. Br. 4.)
We thus consider, as a second issue, whether Appellants have shown
reversible error in the Examiner’s finding that the claim phrase “an
amorphous overbased alkaline earth metal sulfonate in an amount sufficient”
does not comply with the written description requirement of the first
paragraph of § 112.
For the reasons explained below, we decide both issues in favor of
Appellants.
FINDINGS OF FACT
The invention is directed to “[a]n additive mixture for lubricant oils”
(Spec. 1:25) such as those used in engines for motorized vehicles (Spec. 1:8-
9) which is said to provide “a lubricant oil composition having improved
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lubricity and exhibit[ing] less sedimentation” (Spec. 2:4-5). According to
the Specification, formation of sediment is a problem which occurs during
aging of a lubricant oil, i.e., during storage. (Spec. 1:15-18.)
The additive mixture of the invention includes a detergent compound
and a friction modifier. (Spec. 1:25-26.) The detergent compound of
appealed claim 12 is “an amorphous overbased alkaline earth metal
sulfonate in an amount sufficient to provide a sedimentation rate of no more
than about 0.005% per week at 70ºC for at least 12 weeks.” The
Specification states that “[o]verbased alkaline earth sulfonates are detergent
compounds prepared by neutralizing a sulfonic acid with an excess of
alkaline earth metal base (e.g., the hydroxides of magnesium, calcium or
barium) so as to produce an overbased alkaline earth metal sulfonate with a
total base number (‘TBN’) of greater than zero.” (Spec. 3:7-10.) “The
preferred overbased alkaline earth metal sulfonate is overbased calcium
sulfonate having a TBN of above about 250,” (Spec. 3:14-15), e.g., C-
400CLR (Spec. 3:19-21). According to the inventors, the reduced
sedimentation achieved using amorphous overbased calcium sulfonate is
likely due to its smaller particle size (Spec. 7:20-21), which is “less than
about 30 nm” (Spec. 3:21-22).
The Specification does not provide a range for, or otherwise define the
claim 12 phrase “an amount sufficient.” In the Specification, experimental
testing of additive mixtures within the scope of claim 12 is limited to
compositions containing 10% C-400CLR as the amorphous overbased
calcium sulfonate. (Spec. 7:6-9.) In several experiments using compositions
within the scope of claim 12 (e.g., Exs. 6 and 23-27), a sedimentation rate of
0 was measured each week for a period of 2-5 weeks, followed by weekly
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measurements of 0.001, 0.002 or 0.005% during the remaining portion of the
12 week period. (See Spec. 9 & 13, Tables 1 and 3.)
PRINCIPLES OF LAW
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language.

In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). In establishing a basis
for finding lack of support under 35 U.S.C. § 112, first paragraph, the
Examiner has the initial burden of presenting evidence of reasons why
persons skilled in the art would not recognize in the earlier disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 263 (CCPA 1976).
When the original written description describes something within the
scope of the claim, the Examiner must do more than point out that a claim is
broader than a specific embodiment disclosed in the specification. See In re
Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981). The Examiner must
provide some analysis that either: (1) considers factors such as the
knowledge of one skilled in the art and the level of predictability in the field,
Bilstad v. Wakalopulos, 386 F.3d 1116, 1125-26 (Fed. Cir. 2004), or (2)
demonstrates that the specification distinguishes the prior art as inferior and
touts the advantages of the specifically described embodiment. Tronzo v.
Biomet, 156 F.3d 1154, 1159 (Fed. Cir. 1998) (claims not limited to conical
cup implants found unsupported because specification distinguished prior art
shapes as inferior and touted the advantage of the conical shape).
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ANALYSIS
Appellants have persuasively shown that the claim phrase “a
sedimentation rate of no more than about 0.005% per week” is supported by
Examples in the Specification in which measured sedimentation rates range
from 0 to 0.005% over a 12 week time period. Cf. In re Wertheim, 541 F.2d
at 265 (holding that a later claimed range of “35-60%” did not violate the
written description requirement where the originally filed application
disclosed a broader range of “25%-60%,” along with two examples showing
36% and 50%, respectively). We also agree that the Examiner erred in
rejecting the claims on the basis that the Specification does not support an
infinite time period extending beyond the claimed “at least 12 weeks.” A
lubricant composition of the type claimed by Appellants has a limited useful
life. Sedimentation also appears to occur over a limited time frame, i.e.,
during storage. The ordinary artisan would understand that the low
sedimentation rate would be expected to continue for the limited period of
time during which the composition is stored and/or used, not for an
“infinite” period of time. The Examiner erred in failing to take into account
factors such as the knowledge of one skilled in the art and the level of
predictability in the field. See Bilstad, 386 F.3d at 1125-26; cf. In re
Howarth, 654 F.2d 103, 105 (CCPA 1981) (“An inventor need not . . .
explain every detail [of the invention] since he is speaking to those skilled in
the art. What is conventional knowledge will be read into the disclosure.”).
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With respect to the claim 12 phrase “an amount sufficient,” the
Examiner has simply not met the burden to establish non-compliance with
the § 112 written description requirement. See case law discussed supra p.
6. As pointed out by Appellants, the original Specification describes
something within the scope of claim 12, i.e., examples using an amount of
amorphous overbased calcium sulfonate which provides the claimed
sedimentation rate. The Examiner, however, has done nothing more than
point out that claim 12 is broader in scope than a specific embodiment in the
Specification. See In re Rasmussen, 650 F.2d at 1215.
Therefore, we do not sustain the rejection of claims 12-18 under 35
U.S.C. § 112, first paragraph.
Rejections of claims 12-18
under 35 U.S.C. § 103(a)
ISSUE
The sole issue presented for our review with respect to all three
grounds of rejection under 35 U.S.C. § 103(a) is: Have Appellants shown
reversible error in the Examiner’s determination that it would have been
obvious to have used Papke’s amorphous overbased calcium sulfonate as the
metal detergent in Papay’s lubricant composition to achieve the claimed
composition?
We answer this question in the negative.
FINDINGS OF FACT
The Examiner finds that Papay discloses a lubricant composition as
claimed in claim 12, with the exception of an express teaching that the
overbased calcium sulfonate detergent (Papay, col. 13, ll. 42-47) is
amorphous. (Ans. 6, 1st para.) The Examiner specifically finds that Papay
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discloses an embodiment in which the detergent component is present in an
amount of .01-10%, which overlaps Appellants’ preferred 10%
concentration (see App. Br. 10, 2nd para.). (Ans. 5 (citing Papay, col. 50, ll.
12-15).) The Examiner finds that Papke discloses a method of producing an
amorphous overbased calcium sulfonate having a TBN and particle size
consistent with that of Appellants’ preferred detergent, C-400CLR. (Ans. 6
(citing Papke, col. 4, ll. 56-59).)
Appellants do not dispute these findings. (See Rep. Br. 4-6.) Nor do
Appellants dispute the Examiner’s proposed motivation for combining the
references (see Ans. 6 (noting Papke’s teaching, col. 1, ll. 36-47, that
“crystalline products can be unacceptably hazy and unstable”)). (See Rep.
Br. 4-6.)
Appellants rely on the Specification Examples as evidence of
unexpected results. (See Rep. Br. 5; Ans. 10.) In the Examples, testing was
conducted on compositions in which the amorphous overbased alkaline earth
metal sulfonate component was not varied, i.e., the Examples used C-
400CLR at a 10% concentration. (Id.)
PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). “The test for
obviousness is not . . . that the claimed invention must be expressly
suggested in any one or all of the references.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). “[O]bjective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971).
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ANALYSIS
We have fully considered Appellants’ arguments and evidence in
support of nonobviousness. However, we find that a preponderance of the
evidence weighs in favor of the Examiner’s conclusion of obviousness for
the reasons well-stated in the Answer.
Appellants argue that neither Papay (see Rep. Br. 4-6) nor Papke (see
App. Br. 11), individually, discloses the claimed invention. However,
Appellants have not addressed the Examiner’s rationale for rejecting the
claims, which is based on the combined teachings of the references. (See
supra p. 9 citations to Rep. Br.) We are also in agreement with the
Examiner’s assessment of Appellants’ evidence as not commensurate in
scope with the claimed invention and, therefore, not persuasive of
unexpected results. (See Ans. 10.) We additionally note that Appellants’
tests are limited to a single amorphous overbased calcium sulfonate,
although claim 12 is directed to “an amorphous overbased alkaline earth
metal sulfonate” (emphasis added) which encompasses other metal
sulfonates, such as magnesium and barium sulfonates. (See supra p. 5
quoting Spec. 3:7-10.)
Appellants’ arguments are limited to features recited in independent
claim 12. Appellants do not advance any new arguments in connection with
the separate rejections of dependent claim 16 and dependent claims 17-18.
Accordingly, we sustain all three grounds of rejection under 35 U.S.C.
§ 103(a).
CONCLUSION
Appellants have identified reversible error in the Examiner’s rejection
of claims 12-18 under 35 U.S.C. § 112, first paragraph, but have not
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identified reversible error in the Examiner’s obviousness determination. The
decision of the Examiner rejecting claims 12-18 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)(1)(v).

AFFIRMED

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CROMPTON CORPORATION
BENSON ROAD
MIDDLEBURY, CT 06749
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