Ex Parte Gutierrez et al

Board of Patent Appeals and Interferences

Jan 20, 2012

10727941 (B.P.A.I. Jan. 20, 2012)

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.
10/727,941 12/04/2003 Antonio Gutierrez 2003L007 6980
7590 01/23/2012
Infineum USA L.P.
Law Department
1900 East Linden Avenue
P.O. Box 710
Linden, NJ 07036-0710
EXAMINER
LANG, AMY T
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
01/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte ANTONIO GUTIERREZ, JACOB EMERT,
ANDREW J. D. RITCHIE, and MICHAEL MINOTTI

_________________

Appeal 2009-009811
Application 10/727,941
Technology Center 3700
_________________

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/727,941

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This appeal of the rejection of claims 1-22 was brought under 35
U.S.C. § 134 by the named inventors and the real party-in-interest, Infineum
International Limited. (App. Br. 1-2). A hearing was held on
January 10, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
In the Answer entered March 13, 2009, to which we refer in this
opinion, the Examiner maintained the following rejections:
 Claims 1, 2, 5, 6-10, 13-15, and 19-22 under the non-statutory
doctrine of obviousness-type double-patenting over claims 1-5,
10, 11, and 16-21 of Ritchie1 (Ans. 3-4);
 Claims 1-4, 6-12, 14-16, 19, and 21 under 35 U.S.C. § 103(a)
over Carrick2 and Nalesnik3 (Ans. 5-6);
 Claims 5 and 13 under 35 U.S.C. § 103(a) over Carrick,
Nalesnik, and Locke4 (Ans. 6-7);
 Claim 17 under 35 U.S.C. § 103(a) over Carrick, Nalesnik, and
Mishra5 (Ans. 7-8);
 Claim 18 under 35 U.S.C. § 103(a) over Carrick, Nalesnik,
Mishra, and Ver Strate6 (Ans. 8-9); and
 Claims 20 and 22 under 35 U.S.C. § 103(a) over Carrick,
Nalesnik, and Ueda7 (Ans. 9-10).

1 U.S. Patent No. 6,869,919, issued March 22, 2005.
2 U.S. Patent No. 6,583,092, issued June 24, 2003.
3 U.S. Patent No. 5,207,938, issued May 4, 1993.
4 U.S. Patent No. 6,784,143, issued August 31, 2004.
5 U.S. Patent No. 6,753,381, issued June 22, 2004.
6 U.S. Patent No. 4,804,794, issued February 14, 1989.
7 U.S. Patent No. 4,286,567, issued September 1, 1981.
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The Examiner withdrew the rejections under 35 U.S.C. § 112, second
paragraph, of claims 4 and 12, following Appellants’ amendments to claims
4 and 12 on November 7, 2007. (Ans. 2 and 10.)
The Examiner also withdrew the rejections of claims 1, 2, 5, 6-10, 13-
15, and 19-22 under 35 U.S.C. § 102(e) over Ritchie in light of Appellants’
arguments. (See Ans. 10.)
Appellants do not argue for the separate patentability of any of the
claims in the groups of rejections. In addition, Appellants rely on their
arguments against the rejection of claim 1 over Carrick and Nalesnik to
argue against the rejections of claims 5, 13, 17, 18, 20, and 22. (App. Br. 9.)
We focus on the rejection of claim 1 over Ritchie and over Carrick and
Nalesnik. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ claim 1 recites8:
A lubricating oil composition comprising
[a] a major amount of at least one of a Group I, Group II
or Group III mineral oil of lubricating viscosity, or a mixture
thereof;
[b] a minor amount of one or more high molecular
weight polymers comprising olefin copolymers containing at
least one moiety selected from alkyl amine, alkyl amide, aryl
amine or aryl amide groups, nitrogen-containing heterocyclic
groups or ester linkages; and
[c] a minor amount of dispersant comprising one or
more nitrogen-containing dispersants that are the reaction
product of
(i) a polyalkenyl-substituted mono- or dicarboxylic
acid, a polyalkenyl-substituted anhydride or a
polyalkenyl-substituted ester; and

8 Claim 1 has been modified by the addition of indentations and bracketed
letters. See 37 C.F.R. § 1.75 (i).
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(ii) a polyamine;
[d] wherein at least one of the nitrogen-containing
dispersants has a polyalkenyl moiety with a number average
molecular weight of at least about 1800, and from about 1.3 to
l.7 mono- or dicarboxylic acid producing moieties per
polyalkenyl moiety; and
[e] dispersant contributes at least about 0.08 wt. % of
nitrogen to the lubricating oil composition.

(App. Br., Claims App’x, 1.)

Obviousness-type double-patenting
To argue against the Examiner’s rejections under the doctrine of
obviousness-type double-patenting, Appellants refer to their arguments
against the rejections over Ritchie under 35 U.S.C. § 102(e). (App. Br. 7.)
Appellants argue that Ritchie does not anticipate the claimed lubricating oil
and related methods because the “functionality” of the dispersant claimed by
Ritchie is not specified or critical and because the combination of
dispersants claimed by Appellants is not shown in Ritchie to improve
performance. (Id.) Appellants also argue that the dispersants in Ritchie are
not required to have the molecular weight distribution range claimed by
Appellants and are not described in Ritchie with sufficient detail to
determine if they fall within the scope of Appellants’ claims. (Id.)
Appellants do not argue that the Examiner’s findings of fact regarding
the lubricating oil compositions claimed by Ritchie are in error. Nor do
Appellants argue that the Examiner’s conclusions about the parameters that
would have been considered obvious were made in error. (See Ans. 3-4 and
10-11). Thus, Appellants do not argue that the Examiner erred in
concluding the claimed lubricating oil and related methods would have been
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obvious. Accordingly, we affirm the Examiner’s decision to reject the
claims under the doctrine of obviousness-type double-patenting.

Obviousness over Carrick and Nalesnik
The following findings of fact are supported by at least a
preponderance of the evidence.
Carrick teaches a lubricating oil for diesel engines comprising Groups
I, II, or III mineral oil as a base. (Carrick, col. 4, ll. 25-40.)
Carrick teaches a lubricating oil that includes a dispersant of a
succinic acid or anhydride substituted with a hydrocarbon and reacted with
polyamine. (Id., col. 15, ll. 1-32.) Carrick teaches further that the succinic
acid or anhydride is a dicarboxylic acid. (Id., col. 16, ll. 42-58.) Carrick
teaches that the hydrocarbon substituent group is a polyalkene with a
number average MW form 700-2000 (Carrick, col. 16, ll. 52-59) and that the
ratio of succinic groups to polyalkene substituent groups is 0.9 to 2.5 (id.,
col. 16, ll. 47-52). Carrick teaches the nitrogen-containing dispersant is
present at up to about 10% by weight. (Id., col. 20, ll. 55-61.) Appellants do
not dispute that this amount of nitrogen-containing dispersant indicates that
the oil contains at least about 0.08% by weight of nitrogen.
Carrick also teaches adding viscosity index improvers to lubricating
oil. (Carrick, col. 22, ll. 50-52.) Carrick teaches the viscosity index
improver can be an olefin copolymer grafted with maleic anhydride and
derivatized with an amine. (Carrick, col. 23, ll. 15-26.) Carrick does not
teach a specific amine.
Nalesnik teaches viscosity index improvers that are used in producing
dispersant-antioxidant olefin copolymers. Nalesnik teaches derivatizing
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olefin copolymer (maleic anhydride olefin copolymer (“MAOCP”)) with an
amine, specifically N-phenyl phenylenedamine, which the Examiner found
is an aryl amide. (Nalesnik, col. 5, ll. 1-25, Example 1; Ans. 6.)
Examiner concluded that it would have been obvious to add the
viscosity index improver of Nalesnik to the lubricating oil of Carrick
because Carrick teaches using an olefin copolymer derivatized with amine as
a viscosity index improver and Nalesnik teaches that N-phenyl
phenylenedamine is a desirable, known aryl amine for making a derivatized
olefin copolymer. (Ans. 6.)
Appellants argue that Carrick does not require dispersants in the
disclosed lubricating oil, and if present, does not require the recited
polyalkenyl molecular weight and/or molecular weight distribution or the
claimed nitrogen content of the dispersant. (App. Br. 8.) Appellants argue
that the composition of Carrick does not have the “required dispersant
functionality.” (Id.) Appellants also argue that Carrick does not require
viscosity modifiers in the disclosed lubricating oil and, if present, does not
require that a viscosity modifier be derivatized by a nitrogen-containing
moiety. (Id.)
Appellants do not dispute that these elements are taught, even if not
required, in Carrick. 9 To render the claimed lubricating oil obvious, the

9 Appellants state that the Examiner’s assumption that "the dicarboxylic acid
groups are viewed as a two separate moieties in the ratio of carboxylic acid
producing moieties,” is “unreasonable.” (App. Br. 7.) Appellants do not
provide a citation to the record, though they quote this as the Examiner’s
language. Appellants do not provide sufficiently specific argument and do
not direct us to sufficient evidence in support of their contention.
Furthermore, Appellants state that the Examiner’s interpretation “is not
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prior art need not require the recited elements, as long as they are suggested.
See In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976) (“The fact that
neither of the references expressly discloses asymmetric dialkyl moieties is
not controlling; the question under 35 U.S.C. s 103 is not merely what the
references expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. . . . the fact that a
specific symmetric dialkyl is taught to be preferred is not controlling, since
all disclosures of the prior art, including unpreferred embodiments, must be
considered.” (citations omitted)). Accordingly, we are not persuaded by
Appellants’ arguments.
Appellants argue that Nalesnik fails to teach any advantage in
lubricating oil when the disclosed high molecular weight polymers
derivatized with nitrogen-containing moieties are used in combination with
the class of dispersants recited. (App. Br. 8.) “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007). Carrick teaches derivatizing olefin copolymer
with an amine in lubricating oil. (Carrick, col. 23, ll. 15-26.) Because
Nalesnik teaches that the amine was known to be an aryl amine, as claimed
(Nalesnik, col. 5, ll. 1-25, Example 1; Ans. 6), Appellants’ argument has
failed to persuade us that the claimed lubrication oil was non-obvious.

critical with regard to the present rejection.” (App. Br. 8.) Accordingly, we
do not consider this statement as an argument.
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Appellants argue that claimed combination of dispersant and
derivatized high molecular weight polymer produces unexpected results,
citing to the results of the “Mack T-11” test provided in Tables 1-3, of their
specification. (App. Br. 8, citing to spec., pp. 35-38.) Table 1 includes test
results for three comparative samples and an inventive sample. Appellants
do not provide sufficient explanation of how the comparative examples
relate to the compositions of mineral oil, olefin copolymer, and dispersant
disclosed in Carrick. Appellants do not point to, and we do not find,
sufficient explanation that the comparative examples described in their
specification represent the prior art closest to the claimed composition. (See
Ans. 12.) Even if Appellants’ specification contains objective evidence of
an advantage in the claimed composition, Appellants must compare the
claimed composition to the closest prior art to successfully demonstrate
unexpected results. See In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(“[A]ppellants have not presented any experimental data showing that prior
heat shrinkable articles split. Due to the absence of tests comparing
appellants' heat shrinkable articles with those of the closest prior art, we
conclude that appellants' assertions of unexpected results constitute mere
argument and conclusory statements in the specification which cannot
establish patentability.”)
Dependent Claims 5, 13, 17, 18, 20, and 22
Appellants argue that the claims dependent on claims 1 and 8 are
patentable for the same reasons they argue that claim 1, and by extension
claim 8, is patentable. (App. Br. 9.) For the reasons provided above, we are
not persuaded by these arguments. Accordingly, we are not persuaded that
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the lubricating oil recited in Appellants’ dependent claims are patentable
under 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1, 2, 5, 6-10, 13-15, and 19-22 under the non-
statutory doctrine of obviousness-type double-patenting over claims 1-5, 10,
11, and 16-21 of Ritchie is sustained;
the rejection of claims 1-4, 6-12, 14-16, 19, and 21 under 35 U.S.C.
§ 103(a) over Carrick and Nalesnik is sustained;
the rejection of claims 5 and 13 under 35 U.S.C. § 103(a) over
Carrick, Nalesnik, and Locke is sustained;
the rejection of claim 17 under 35 U.S.C. § 103(a) over Carrick,
Nalesnik, and Mishra is sustained;
the rejection of claim 18 under 35 U.S.C. § 103(a) over Carrick,
Nalesnik, Mishra, and VerStrate is sustained; and
the rejection of claims 20 and 22 under 35 U.S.C. § 103(a) over
Carrick, Nalesnik, and Ueda is sustained.
Therefore, we affirm the decision of the Examiner.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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