Ex Parte Hanyuda et al

Patent Trial and Appeal Board

Dec 11, 2018

14344347 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/344,347 03/26/2014
23632 7590 12/13/2018
SHELL OIL COMPANY
POBOX576
HOUSTON, TX 77001-0576
FIRST NAMED INVENTOR
Kiyoshi Hanyuda
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.
TS8216-US-PCT 8695
EXAMINER
V ASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
12/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIYOSHI HANYUDA and TETSUO W AKIZONO
Appeal2017-009146
Application 14/344,34 7 1
Technology Center 1700
Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-8. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The appealed claims are directed to a lubricating oil composition
(Claim 1 ). The composition is said to provide improved friction lowering
effect and an improved corrosion prevention effect (Spec. 1 :2---6).
1 According to Appellants, the real party in interest is Shell Oil Company
(App. Br. 2).
Appeal2017-009146
Application 14/344,347
Claim 1 is illustrative:
1. A lubricating oil composition comprising:
- as constituent (a), 0.5 to 1.5 mass% of a mono or diester
of glycerin and a straight-chain or branched fatty acid of carbon
number 6 to 20 having a saturated hydrocarbyl group;
- as constituent (b ), 0.1 to 0.5 mass% of a triazole
derivative represented by general formula (1 ):
( 1 )
wherein R1 is hydrogen or a hydrocarbyl group of carbon
number 1 to 3, R2 and R3 are respectively independently
hydrogen or a hydrocarbyl group of carbon number 1 to 20,
which may contain an oxygen atom, sulphur atom or nitrogen
atom; and,
- as constituent (c), 0.01 to 0.2 mass%, calculated as
phosphorus, of a mixture of primary zinc dialkyl
dithiophosphate whose alkyl group is a primary hydrocarbyl
group and a secondary zinc dialkyl dithiophosphate whose alkyl
group is a secondary hydrocarbyl group;
wherein the ratio of constituent (a)/ constituent (b) is 1. 5
to 8.
THE REJECTION
Appellants appeal the following rejection:
Claims 1-8 are rejected under 35 U.S.C. § I03(a) as unpatentable over
Nagakari (US 2010/0105590 Al, published Apr. 29, 2010), in view of
Kamano (US 2012/0238481 Al, published Sept. 20, 2012), and Boffa (US
2008/0039348 Al, published Feb. 14, 2008).
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Appeal2017-009146
Application 14/344,347
FINDINGS OF FACT & ANALYSIS
Appellants argue the subject matter of claim 1 only (App. Br. 3-5).
Appellants argue there is no prima facie case of obviousness because
there is insufficient reasoning provided for why one of ordinary skill in the
art would have selected Boffa's mixture of primary and secondary zinc
dialkyl dithiophosphate and Kamano' s glycerol amount to arrive at the
claimed invention with the claimed glycerol to dithiophosphate ratio (App.
Br. 4 ). Appellants contend that the prior art discloses a laundry list of
various additives (App. Br. 4). Appellants allege that a synergistic effect is
achieved by the lubricating oil composition (App. Br. 5). Appellants argue
that the ordinarily skilled artisan would have to pick and choose from a long
list of possible additive combinations to arrive at the claimed invention
(App. Br. 5).
The Examiner's rejection, however, finds that Nagakari teaches the
limitations of claim 1, except for the amount of glycerol (component (a) in
the claim) and the zinc dialkyl dithiophosphates being formed by a mixture
of primary and secondary alkyl groups (Final Act. 3--4). The Examiner
relies on Kamano's teachings to use from 0.01 to 5 wt% of glycerol in a
lubricating oil composition (Final Act. 4). The Examiner concludes that
using Kamano 's amount of glycerol for the glycerol component of
Nagakari's composition would have been obvious to enhance friction
reducing properties (Final Act. 4). The Examiner relies on Boffa's teachings
to use zinc dialkyl dithiophosphates (ZDDP) made from a primary and
secondary ZDDP (Final Act. 4). The Examiner concludes that it would have
been obvious to use Boffa's mixture of ZDDP in Nagakari's oil composition
as modified by Kamano in order to reduce lead corrosion (Final Act. 4--5).
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Appeal2017-009146
Application 14/344,347
As noted above, the Examiner has provided reasoned findings that
support the combination of the various additives with Nagakari's lubricating
oil composition. That many additive combinations are possible, does not
render any one of them less obvious. See Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Appellants contend that
picking and choosing would have been required to arrive at the claimed
invention. Picking and choosing is completely appropriate for a rejection
under§ 103, as in the present case. See In re Arkley, 455 F.2d 586, 587
(CCPA 1972). Accordingly, Appellants' argument is not persuasive.
Appellants allege a synergistic effect produced by the combination of
compounds in the claim. We adopt the Examiner's response to this
argument on pages 6-7 of the Answer as our own. Appellants have not
made the requisite showing to establish unexpected results or synergy.
On this record, we affirm the Examiner's§ 103 rejections over
Nagakari in view ofKamano and Boffa.
DECISION
The Examiner's decision is affirmed. No time period for taking any
subsequent action in connection with this appeal may be extended under 37
C.F .R. § 1.13 6( a )(1 )(iv).
ORDER
AFFIRMED
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