Ex Parte Haigh et al

Board of Patent Appeals and Interferences

Aug 13, 2012

11717343 (B.P.A.I. Aug. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/717,343 03/13/2007 Heather M. Haigh JJA-0703 8607
7590 08/13/2012
ExxonMobil Research and Engineering Company
P.O. Box 900
Annandale, NJ 08801-0900
EXAMINER
WEISS, PAMELA HL
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
08/13/2012 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 HEATHER M. HAIGH, BRANDON T. WELDON
and JASON Z. GAO
________________

Appeal 2011-002025
Application 11/717,343
Technology Center 1700
________________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3-12 and 19.
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method for lubricating diesel engines, operating under conditions
wherein soot accumulates in the engine oil, so as to control the soot induced
viscosity increase caused by the presence of soot in the engine oil
comprising adding to the diesel engine operating under conditions wherein
soot accumulates in the engine oil a lubricating oil comprising a mixture of
conventional/mineral oil derived base stock or base oil lubricating oil and
Appeal 2011-002025
Application 11/717,343

2
about 10 to 80 wt% of a GTL base stock and/or base oil and/or
hydrodewaxed or hydroisomerized/ catalytic (or solvent) dewaxed base
stock or base oil, based on the weight of the total base oil, whereby the
soot induced viscosity increase is less than that obtained when the diesel
engine is lubricated with a lubricating oil which does not contain the 10 to
80 wt% of a GTL base stock and/or base oil and/or hydrodewaxed or
hydroisomerized/ catalytic (or solvent) dewaxed base stock or base oil.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
O’Rear 2003/0100453 A1 May 29, 2003
Ritchie 2004/0048753 A1 Mar. 11, 2004
Bera 2006/0189492 A1 Aug. 24, 2006

Appellants’ claimed invention is directed to a method for lubricating
diesel engines and controlling an increase in viscosity induced by soot. The
method entails using a lubricating oil comprising a mixture of
conventional/mineral oil derived base stock and a GTL base stock and/or
base oil and/or hydrodewaxed or hydroisomerized/catalytic dewaxed base
stock or base oil.
All the appealed claims stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over either Bera or Ritchie in view of O’Rear.1
Appellants do not present separate arguments for any particular claim
on appeal. Accordingly, all the claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we find ourselves in complete agreement with the
Examiner’s reasoned analysis and application of the prior art, as well as her
cogent and thorough disposition of the arguments raised by Appellants.
                                                            
1 The Examiner has withdrawn the rejection of claims 1 and 3-5 under § 103
over Schaberg.
Appeal 2011-002025
Application 11/717,343

3
Accordingly, we will adopt the Examiner’s reasoning as our own in
sustaining the rejections of record.
We will not further burden the record by reiterating the Examiner’s
position which is fully responsive to the arguments raised by Appellants.
We will, however, make note of the following salient points set forth by the
Examiner:
(a) while Appellants argue that Bera and Ritchie disclose
extensive lists which comprise the claimed lubricating
mixture of oils, the presently claimed mixture is of extensive
breadth and is not limited to a mixture of two specific oils,
(b) the present claims on appeal do not exclude the soot
reduction additives of Bera and Ritchie and, indeed,
Appellants’ Specification provides for the inclusion of such
additives,
(c) both Bera and Ritchie teach the use of a mixture of the
claimed oils for lubricating diesel engines,
(d) O’Rear teaches that a mixture of GTL oil and mineral oil, as
taught by Bera, results in a base oil having improved
stability and oxidation resistance during storage and use in
engines,
(e) Bera discloses that oxidation inhibitors reduce the tendency
of mineral oils to deteriorate into soot and sludge while in
service and, therefore, the improvement in oxidation
reduction disclosed by O’Rear would have been recognized
by one of ordinary skill in the art as contributing to a
decrease in viscosity induced by soot.
Appeal 2011-002025
Application 11/717,343

4
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, for the reasons well stated by the Examiner, the
Examiner’s decision rejecting the appealed claims 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)(iv).
AFFIRMED
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