Ex Parte Devlin et al

Patent Trial and Appeal Board

Dec 28, 2018

14606529 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/606,529 01/27/2015 Mark T. Devlin
45473 7590 12/31/2018
EGL/Research Triangle Park
P.O. BOX 110285
RESEARCH TRIANGLE PARK, NC 27709
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.
14677-58 1405
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
12/31/2018 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 MARKT. DEVLIN, HELEN T. RYAN, and KATIE A. HUDSON
Appeal2018-000939
Application 14/606,529
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY, and JANE E. INGLESE,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3---6, 8-14, and 16. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification ("Spec.") filed January 27, 2015,
the Examiner's Final Office Action ("Final Act.") dated August 25, 2016,
Appellants' Appeal Brief ("Appeal Br.") filed May 9, 2017, the Examiner's
Answer ("Ans.") dated September 5, 2017, and Appellants' Reply Brief
("Reply Br.") filed November 6, 2017.
2 Appellant is the Applicant, Afton Chemical Corporation, which is
identified in the Appeal Brief as the real party in interest (Appeal Br. 3).
Appeal2018-000939
Application 14/606,529
STATEMENT OF THE CASE
The invention relates to lubricant additives for use in lubricating oil
formulations, particularly for slideways containing plastic sliding surfaces
(Spec. ,r,r 2, 3). Appellant discloses the lubricating additive includes a
metal-free friction modifier and a metal-free, sulfur-free, phosphorus
containing anti-wear/extreme pressure agent, providing a lower coefficient
of friction for non-metal sliding surfaces than for metal sliding surfaces (id.
,r 4). As the metal-free friction modifier, Appellant discloses glyoxalidines
and/or glycerides, wherein either 2-(2-heptadec-1-enyl-4,5-dihydroimidazol-
1-yl)ethanol (UNAMINE O®) and glycerol monooleate are particularly
suitable (id. ,r,r 13, 14). As the metal-free, sulfur-free, phosphorus
containing anti-wear/extreme pressure agent, Appellant discloses
phosphonate esters, including dimethyloctadecyl phosphonate (DMOP) (id.
i1 15).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A slideway lubricating oil composition comprising:
a base oil;
a metal-free friction modifier selected from the group
consisting of glyoxalidines, glycerides, and combinations
thereof, wherein the glycerides are of the formula:
wherein each R is independently selected from the group
consisting ofH and C(O)R' wherein R' may be a saturated or an
unsaturated alkyl group having from 3 to 23 carbon atoms; and
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a metal-free and sulfur-free, phosphorus containing anti-
wear/extreme pressure agent;
wherein the slideway lubricating oil composition
provides a lower coefficient of friction for non-metal sliding
surfaces than for metal sliding surfaces.
Independent claim 6 recites a slideway lubricating additive
composition as recited in claim 1 without the base oil.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 1, 3---6, 8-14, and 16 under 35 U.S.C. § I03(a) as
unpatentable over Iyer3 in view of either Srinivasan4 or Henley; 5
2. Claims 1, 3---6, 8-10, 12-14, and 16 on the ground ofnon-
statutory double patenting as unpatentable over claims 1--4 of U.S.
Patent No. 8,962,539; 6 and
3. Claim 11 on the ground of non-statutory double patenting as
unpatentable over claims 1--4 of U.S. Patent No. 8,962,539 in view of
Iyer.
ANALYSIS
Rejection 1: Obviousness over Iyer in view of Srinivasan or Henley
After review of the opposing positions articulated by Appellant and
the Examiner and the evidence of obviousness adduced by the Examiner in
3 Iyer et al., US 2006/0264340 Al, published November 23, 2006 ("Iyer").
4 Srinivasan et al., US 5,891,786, issued April 6, 1999 ("Srinivasan").
5 Henley et al., US 2007 /0293406 Al, published December 20, 2007
("Henley").
6 Devlin et al., US 8,962,539 B2, issued February 24, 2015.
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Application 14/606,529
light of the countervailing Declaration evidence proffered by Appellant, we
determine that the Appellant's arguments and evidence are insufficient to
outweigh the evidence of obviousness marshalled by the Examiner. Thus,
Appellant has not identified reversible error in the Examiner's obviousness
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Appellant argues all the claims under this rejection as a group. We
select claim 1 to address the issues raised. Remaining claims 3---6, 8-14, and
16 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
The Examiner finds Iyer teaches a transmission lubricating fluid
comprising a base oil, a succinimide friction modifier, and a phosphonate
such as DMOP (Final Act. 3). As such, the Examiner finds Iyer's
phosphonate is metal-free, sulfur-free and phosphorus containing (id.). The
Examiner also finds Iyer teaches one or more friction modifiers may be used
in addition to the succinimide friction modifier, but fails to teach the friction
modifiers of claim 1 (id.). The Examiner finds, however, that Srinivasan
teaches transmission fluids similar to Iyer's comprising UNAMINE O®,
which is a conventional metal-free, amine-containing hydroxyalkyl alkenyl
glyoxalidine friction modifier (id. at 4). Alternatively, the Examiner finds
that Henley teaches transmission fluids similar to Iyer's comprising an
imidazoline friction modifier such as UNAMINE O® combined with a
succinimide friction modifier (id.). The Examiner concludes that it would
have been obvious to have combined UNAMINE O® with Iyer's
succinimide friction modifier because Srinivasan and Henley teach
UNAMINE O® is useful in transmission fluids and Henley suggests
combining succinimide friction modifiers with other friction modifiers
including UN AMINE O® (id.). The Examiner also finds that the resulting
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lubricating fluid would suitably provide the lower friction coefficients as
recited in claim 1 (id. at 5).
Appellant argues that the rationale for combining Srinivasan with Iyer
is insufficient (Appeal Br. 6-10). 7 Although Appellant acknowledges that
UNAMINE O® was a known friction modifier, Appellant disagrees that
Iyer's teaching that the lubricating fluid may include one or more other
friction modifiers in addition to the succinimide friction modifier is
sufficient to lead the skilled artisan to select specifically UNAMINE O® to
add to Iyer's fluid (id. at 6-7). Appellant contends that the rejection relies
on impermissible hindsight and fails to establish a reasonable expectation of
success that the proposed combination would perform successfully as a
slideway lubricating composition (id. at 7). In particular, Appellant urges
that Iyer and Srinivasan each disclose different lubricating compositions for
different types of transmissions (id.). Thus, Appellant argues that the cited
references fail to provide any suggestion or guidance to specifically select
UN AMINE O® "from the laundry list of friction modifiers mentioned in
Srinivasan" with a reasonable expectation of success (id.). Appellant also
contends the Examiner fails to indicate where in the references "the specific
guidance, or important parameters and conditions" is given that would lead
the ordinary artisan to select the specific components from these references
to arrive at the claimed compositions (id. at 8).
7 We note Appellant argues that a rationale the Examiner had relied on
earlier in the prosecution history, relying on simple substitution, is
scientifically flawed (Appeal Br. 6). Because the obviousness rejections
before us do not rely on simple substitution, we need not address this
argument.
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Appellant also cites to In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007),
for the proposition that nonobviousness can be shown when the ordinary
artisan would not have reasonably predicted the claimed invention based on
the prior art and the resulting invention would have been unexpected in
consideration of all evidence properly presented (Appeal Br. 8). In this
regard, Appellant notes that the data was provided in both the Specification
and in the Declaration of Paul Norris Under 37 C.F.R. § 1.132 ("Deel."),
filed March 23, 2016. Specifically, Appellant directs our attention to
paragraphs 14--16 of this Declaration, which states that Iyer' s succinimide
friction modifier is neither an amine nor a glyoxalidine and Iyer's
ethoxylated amine friction modifier is not the claimed glyoxalidine (id. at 9).
Appellant asserts that these paragraphs of the Declaration state, "that
lubricating compositions are prepared with different components to
accommodate different performance requirements" (id.). Appellant also
asserts, "[a]s provided in the Declaration, the skilled artisan understands that
the performance requirements of lubricating compositions for slideways and
for various transmissions are not the same" (id. at 10). Appellant also
contends that the Examiner ignores friction data in the Specification
"unexpectedly demonstrating that metal-free friction modifiers, especially in
combination with metal and sulfur-free, phosphorous-containing [sic,
phosphorus] anti wear/ extreme pressure agents provided superior friction
modification on non-metal surfaces than metal surfaces" (id. at 9, citing
Sullivan). According to Appellant, "[t]he fact that the compositions have
unexpected, beneficial properties as slideway compositions rebuts any
conclusion of obviousness" (id. at 10).
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Application 14/606,529
As indicated above, Appellant's arguments are not persuasive of
reversible error. The Examiner's proposed combination ofUNAMINE O®
in Iyer's lubricating fluid is based on Iyer's teaching that other friction
modifiers may be included along with the succinimide friction modifier and
Srinivasan's teaching that UNAMINE O® is a known friction modifier (a
fact Appellant concedes). Iyer teaches that the lubricating fluid may include
mixtures of two or more friction modifiers, including "a mixture of one or
more succinimide friction modifiers with one or more amine friction
modifiers" (Iyer ,r 59). In addition, Srinivasan teaches transmission fluids
specifically using UNAMINE O® as a friction modifier (Srinivasan 15,
Tables 1 and 2). Thus, the Examiner's rationale is supported by the prior art
teachings. In addition, this rationale is sufficient to support the Examiner's
proposed combination. See In re Kerkhoven, 626 F .2d 846, 850, 205 USPQ
1069, 1072 (CCPA 1980) ("It is primafacie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose. . . . [T]he idea of combining them flows logically
from their having been individually taught in the prior art.").
Moreover, the fact that Srinivasan teaches a list of other friction
modifiers does not render any particular friction modifier, including
UNAMINE O®, any less obvious, especially because both Iyer and
Srinivasan teach lubricating compositions for transmissions. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose."); see also, In re Susi,
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440 F.2d 442,445 (CCPA 1971) (obviousness rejection affirmed where the
disclosure of the prior art was "huge, but it undeniably include[ d] at least
some of the compounds recited in appellant's generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant's additives").
Though Iyer's composition is for use with automated dual clutch
transmissions whereas Srinivasan's composition is for use with automatic
transmissions (Iyer ,r 2; Srinivasan 1 :7-9), Appellant fails to establish that
these transmissions are not sufficiently similar that the teachings of Iyer and
Srinivasan would have combined with a reasonable expectation of success.
Absolute predictability is not required to establish a prima facie case of
obviousness. In re Drage, 695 F.3d 1334, 1338 (Fed. Cir. 2012)
("Obviousness does not require absolute predictability of success ... all that
is required is a reasonable expectation of success.") (citing In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009)); In re O'Farrell, 853 F.2d 894, 903---04
(Fed. Cir. 1988) ("For obviousness under§ 103, all that is required is a
reasonable expectation of success." (citations omitted)). Indeed, we note
Iyer teaches that performance requirements for fluids for lubricating dual
clutch transmissions involve elements of both manual and automatic
transmission lubricants (Iyer ,r 6).
Similarly, Appellant's argument that the Examiner's proposed
combination of Iyer and Srinivasan relies on impermissible hindsight also
fails to persuade us of reversible error. In this regard, Appellant fails to
direct our attention to any of the Examiner's findings that is gleaned only
from Appellant's disclosure, nor has Appellant demonstrated that the
Examiner's rationale for combining these references is not supported in the
prior art. See, e.g., Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570
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(Fed. Cir. 1996) ("The invention must be viewed not after the blueprint has
been drawn by the inventor, but as it would have been perceived in the state
of the art that existed at the time the invention was made." ( citing
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985))).
Here, as the Examiner explains, the skilled artisan would have understood
from the teachings of Iyer and Srinivasan that an amine based friction
modifier may be combined with Iyer's succinimide friction modifier, and
Srinivasan specifically teaches UNAMINE O as a known amine based
friction modifier for the same purpose.
Appellant's reliance on Sullivan is misplaced because the facts here
are unlike those of Sullivan. As Appellant notes, the record in Sullivan
established that those skilled in the art believed that the unique properties of
F (ab) fragments would prevent them from decreasing the toxicity of snake
venoms (Sullivan, 498 F.3d at 1348). However, Sullivan discovered that
these fragments are not only effective at neutralizing snake venom, but also
they reduce the occurrence of adverse immune reactions in humans (id.).
Unlike Sullivan, Appellant has not established that those skilled in the art
held a belief that the use ofUNAMINE O® would not work in a composition
such as Iyer's.
In addition, though Appellant contends that the Examiner ignores
Appellant's evidence of nonobviousness in the Specification and the Norris
Declaration, the record before us establishes otherwise (see Ans. 16-18). To
the extent that Appellant contends that this evidence establishes unexpected
results, we disagree. The burden of establishing that unexpected results
support a conclusion of nonobviousness rests with the Appellant. In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are
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used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art." In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). "[I]t is not enough to show that
results are obtained which differ from those obtained in the prior art: that
difference must be shown to be an unexpected difference." See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the
relied-upon results must be commensurate in scope with the claims. See In
re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). "Establishing that
one ( or a small number of) species gives unexpected results is inadequate
proof, for 'it is the view of [ the CCP A] that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support."' See In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (quoting In re Tiffin, 448 F.2d 791,792 (CCPA 1971)).
Finally, "it is well settled that unexpected results must be established by
factual evidence. 'Mere argument or conclusory statements in the
specification does not suffice."' See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Initially, we note that Appellant fails to direct our attention to any
evidence that the Specification data was unexpected to those of ordinary
skill in the art. Geisler, 116 F.3d at 1470. Further, as the Examiner finds
(Ans. 17), all compositions in the Specification, Table I, including both
those that fall within and outside claim 1, show higher friction coefficients
on steel surfaces than on plastic surfaces (Spec. 13, Table I). We note
Appellant asserts that the Examiner fails to understand this Specification
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data (Reply Br. 4 ). Appellant urges that the reduction in the friction
coefficient for the claimed compositions on plastic surfaces as compared to
metal surfaces is greater than for metal-containing friction modifiers and
metal and sulfur containing anti-wear/extreme pressure agents and that it is
this difference that provides an unexpected result (id. at 4--5). However,
claim 1 merely requires that the composition provides a lower coefficient of
friction for non-metal sliding surfaces than for metal sliding surfaces.
Further, as the Examiner also finds (Ans. 17-18), the Specification data fails
to compare the inventive compositions to the closest prior art (Baxter
Travenol Labs., 952 F.2d at 392) and is not commensurate in scope with the
claims (Peterson, 315 F.3d at 1329-31).
Here, Iyer is the closest prior art, yet Appellant's data fails to compare
Iyer's composition with a metal-free succinimide friction modifier and
DMOP. Further, as the Examiner finds (Ans. 18), claim 1 broadly recites
lubricating compositions comprising any suitable amount of any
glyoxalidine or any triglyceride wherein each R group is independently H or
C(O)R', wherein R' may be a saturated or an unsaturated alkyl group having
3-23 carbon atoms, and any metal-free, sulfur-free phosphorus containing
anti-wear/extreme pressure agent (see claim 1 ). The Specification data, as
the Examiner finds (Ans. 18), is limited to the use ofUNAMINE O and
glycerol monooleate in a specific amount.
We recognize that evidence of unexpected results need not necessarily
include all possible components and amounts, nor every possible property.
However, such results must enable the ordinary artisan to ascertain a trend in
the data that allows the probative value of the data to reasonably extend to
the full scope of the claim. Here, Appellant argues, but fails to direct our
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attention to any evidence that would enable the ordinary artisan to ascertain
a trend in the Specification data so as to reasonably extend the results to the
entire scope of the claim. In this regard, we note Appellant acknowledges
that the Norris Declaration does not provide unexpected results (Reply Br.
3).
Therefore, for the reasons given above and in the Final Office Action
and the Examiner's Answer, we sustain the Examiner's obviousness
rejection over the combination of Iyer and Srinivasan.
Appellant relies on the same arguments presented against the
combination of Iyer and Srinivasan to dispute the Examiner's obviousness
rejection of claim 1 over the combination of Iyer and Henley. Thus, for the
same reasons given above, we sustain the rejection over the combination of
Iyer and Henley. Significantly, we note Henley is directed to lubricating
fluids for both automatic and manual transmissions including dual-clutch
transmissions (Henley ,r,r 1, 6), and that Henley teaches UNAMINE O® may
be used with a succinimide friction modifier (id., Abstract, ,r,r 4, 5, 18; Ans.
10).
Rejections 2 and 3: Non-statutory Double Patenting
Appellant fails to address the above listed double patenting rejections
from the Final Office Action dated August 25, 2016, from which this appeal
has been taken. Appellant, therefore, has waived the right for further
appellate review of these rejections. The Board will generally not reach the
merits of any issues not contested by an appellant. See 37 C.F.R. §
4I.37(c)(l)(vii) (2010) ("Any arguments or authorities not included in the
brief or a reply brief filed pursuant to § 41.41 will be refused consideration
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by the Board, unless good cause is shown."); Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (the Board may treat arguments the appellant
failed to make for a given ground of rejection as waived); In re Watts, 354
F.3d 1362, 1368 (Fed. Cir. 2004). Accordingly, we summarily affirm these
uncontested rejections.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 1, 3---6, 8-14, and 16 as unpatentable under 35
U.S.C. § 103(a) and on the ground of non-statutory double patenting is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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