Ex Parte Gray et al

Patent Trial and Appeal Board

Nov 5, 2014

11775247 (P.T.A.B. Nov. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/775,247 07/10/2007 Christopher Gray PF2006M007 4669
25553 7590 11/06/2014
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
GRAHAM, CHANTEL LORAN
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
11/06/2014 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 CHRISTOPHER GRAY, ROBERT WILLIAM SHAW, and
DOYLE HAROLD BOESE
____________

Appeal 2013-000763
Application 11/775,2471
Technology Center 1700
____________

Before FRED E. MCKELVEY, RICHARD E. SCHAFER, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.

MCMILLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of a final
rejection of claims 1–7, 10, 11, and 13. Claims 8, 9, and 12 were cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Infineum International
Limited, a company incorporated in England (Br. 1).

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REJECTIONS ON APPEAL
Claims 1–7, 10, 11, and 13, all the pending claims, were rejected
under 35 U.S.C. § 103(a) as being unpatentable over (1) U.S. Patent No.
6,423,670 B2 to Locke et al. (“Locke”) patented July 23, 2002 in view of
(2) U.S. Patent No. 7,018,958 B2 to Arrowsmith et al. (“Arrowsmith”)
patented Mar. 28, 2006, and (3) U.S. Patent No. 6,605,572 B2 to Carrick et
al. (“Carrick”) patented Aug. 12, 2003. Ans. 4.

DISCUSSION
The Claimed Invention
Claim 1 is the sole independent claim and is directed to a lubricating
oil composition. Claim 1 reads as follows [some indentation added]:
An internal-composition engine crankcase lubricating oil composition
having a sulphur content, expressed as atoms of sulphur, of not
greater than 0.3 mass %; and
a sulphated ash content of not greater than 1,
which composition contains, or is made by admixing, the
following additive components in respective minor amounts:
A. at least one oil-soluble or oil-dispersible nitrogen-
containing derivative of a polyalkenyl-substituted mono-
or dicarboxylic acid, anhydride or ester, the polyalkenyl
substituted mono- or dicarboxylic acid or ester being
made from a polyalkene exclusively by the thermal “ene”
reaction, being the sole ashless, nitrogen-containing
dispersant in the lubricating oil composition and
providing from 0.03 to 0.07 mass % of nitrogen in the
lubricating oil composition;
B. at least one oil-soluble or oil-dispersible overbased
alkaline earth metal sulfonate, being the sole overbased
metal detergent system in the lubricating oil composition,
C. a phosphorous-containing antiwear agent in an amount
introducing from 0.05 to 0.08 mass % of phosphorous
into the lubricating oil composition, and;
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D. at least one viscosity modifier.
Appellants argue all claims together. Indeed, in the “Argument’
section of the Appeal Brief, no claims are referred to by number. Br. 4–9.
There was a single rejection directed to all the pending claims. Ans. 4. We,
therefore, also treat the claims as a single group that stand or fall together.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

The Section 103 Rejection
The claims stand rejected under 35 U.S.C. § 103 as unpatentable over
Locke in view of Arrowsmith and Carrick. Locke is directed to lubricating
oil compositions comprising an ashless dispersant, an overbased metal
sulfonate detergent, a phosphorous containing antiwear agent, and a
viscosity modifier. See Ans. 4–6. The Examiner found that Locke taught all
the elements of sole independent claim 1 except a sulphur content of not
greater than 0.3 mass % and a nitrogen content of 0.03 to 0.07 mass %. Id.
at 6. Arrowsmith and Carrick are also directed to lubricating oil
compositions. The Examiner found Arrowsmith taught a sulfur content with
the claimed range and Carrick taught a nitrogen content with the claimed
range. Id. at 7–8.
The three cited references are all directed to the same types of
lubricating compositions as the claimed invention — lubricating oil
compositions for internal combustion engines — and are thus within the
same technical field. In accordance with KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), the Examiner identified “a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed invention does.” See Ans. 8 (“The
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motivation would have been to provide a lubricating oil composition where
the lubricant exhibits superior performance properties in heavy duty (HD)
diesel (compression ignited) internal combustion engines whilst being a low
phosphorous formulation as taught by Locke (col 1, lines 1-9).”)
Accordingly, we see no error in the Examiner’s conclusion that the invention
as a whole would have been obvious to one of ordinary skill in the art at the
time the invention was made.
In response to the rejection of all the pending claims, Appellants
argue “unexpected results.” Br. 4–9. Appellants argue that the
compositions of the application surprisingly allow for the use of a reduced
amount of phosphorous containing wear agents, such as zinc dialkyl
dithiophosphate (ZDDP), while still providing excellent wear performance.
Id. Appellants rely entirely on comparative data described in the written
description portion of the specification to support this argument. See Spec.
15–16. It is the Appellants’ burden to establish unexpected results. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972)(“[T]he burden of showing
unexpected results rests on he who asserts them.”) Whether the evidence
shows unexpected results is a question of fact. In re Geisler, 116 F.3d 1465,
1469-70 (Fed. Cir. 1997). For the reasons explained below, we find that the
Appellants have failed to meet this burden.
The specification describes data relating to only two compositions.
Spec. 15. Lubricant 1 is described as “a lubricant of the invention” and
Lubricant A is described as “a reference lubricant.” Id. Lubricant 1 is
described as containing an ashless dispersant consisting of a polyisobutenyl
moiety said to have been “derived from polyisobutene succinic anhydride
made by the thermal ‘ene’ reaction.” Lubricant A is described as containing
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“an ashless dispersant corresponding to that contained in Lubricant 1 except
that the polyisobutenyl moiety is said to have been derived from
polyisobutene succinic anhydride made by the chlorine process.” Id.
(emphasis added.) These compositions are described as having the same
amount of dispersant, detergent, antiwear agent and viscosity modifier and
the same phosphorous, sulphated ash and sulfur levels. Id. at 15–16. The
only difference between the two compositions was the manner of making the
dispersant.
Results are reported as follows (Spec. 16):
At the end of the Test, the cam lobes and lifters
were measured for wear. The results, expressed as
average cam-plus-lifter wear in microns, were as follows,
where the pass limit for the Test is a maximum of 60
microns.

Lubricant 1 28.8
Lubricant A 87.2

The results demonstrate that the use of the
dispersant in Lubricant 1 gave rise to better wear
performance in an accredited engine test than use of the
dispersant in Lubricant A, to the extent that Lubricant 1
passed the Test whereas Lubricant A failed.
Further tests were carried out according to the
Sequence IIIG procedures on the lubricants to measure
viscosity increase and piston cleanliness.
The results obtained were as follows:

The results show that, although both are within the Test
limits, Lubricant 1 gave rise to a lower, i.e., better,
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viscosity increase than Lubricant A; and that Lubricant 1
gave rise to a better piston deposits performance then
Lubricant A, to the extent that Lubricant 1 passed the
Test whereas Lubricant A failed.

For the purpose of deciding the appeal, we need not decide whether
Lubricant 1 has unexpected properties vis-à-vis Lubricant A. The Examiner
found that the test data results were not commensurate in scope with the
breadth of the claims. Ans. 9–10.
A showing of unexpected results must be commensurate in scope with
the breadth of the claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983). The test data results reproduced in the Specification are not
commensurate with the scope of the claims. Claim 1 provides for “minor
amounts” of the dispersant A, detergent B, antiwear agent C and viscosity
modifier D. The phrase “minor amount” is defined in the specification as
“less than 50 mass % of a composition.” Spec. 3, line 21. Both
compositions described to generate the data relied upon in the specification
are said to have had 3.2 mass % of dispersant, 1.6 mass % of detergent, and
10 mass % of the viscosity modifier. Spec. 15. The amount of antiwear
agent was not provided. Id. Moreover, each of these components was
defined in Claim 1 so as to include any number of compounds but, for each
component, only one material is described as having been used to exemplify
the invention in the experiment described in the specification. Id. Claim 1
provides that the oil composition contain not greater than 0.3 mass %
sulphur, not greater than 1 [no units given in claim 1; Specification says,
“mass %” (see, e.g., page 3, lines 15–16)] sulphated ash, 0.03 to 0.07 mass
% nitrogen and 0.05 to 0.08 mass % phosphorous. The compositions said to
have been used to generate the data relied upon in the application had 0.2
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mass % sulphur, 0.77 mass % sulphated ash, and 0.08 mass % phosphorous.
Spec. 15–16. The amount of nitrogen in the tested compositions was not
provided. Id.
Assuming that the data establishes an unexpected result for
Lubricant 1, the very limited data in the application does not show
unexpected results commensurate in scope with the claimed invention. See,
e.g., 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 generally
inadequate proof; evidence must be commensurate in scope with the claims
which the evidence is offered to support).

CONCLUSION
We affirm the rejection of all the pending claims 1–7, 10, 11, and 13
as unpatentable as obvious under 35 U.S.C. § 103.
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)(iv).

AFFIRMED

cdc