Ex Parte Hanyuda et al

Patent Trial and Appeal Board

Aug 27, 2018

14417837 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/417,837 01/28/2015
23632 7590 08/29/2018
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.
TS8229-US-PCT 5997
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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, 1
Kouichi Kubo, Kouji Murakami, and Izumi Kobayashi
Appeal2017-010899
Application 14/417,837
Technology Center 1700
Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
BRIAND. RANGE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Shell Oil Company ("Hanyuda") timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1-
8 and 10-19. We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Shell Oil
Company. (Appeal Brief, filed 28 March 2017 ("Br."), 2.)
2 Office Action mailed 30 August 2016 ("Final Rejection"; cited as "FR"),
incorporating by reference the rejection set out in the Office Action
mailed 16 Feb 2016, which we cite as "OA".
Appeal2017-010899
Application 14/417,837
A. Introduction 3
OPINION
The subject matter on appeal relates to lubricating oil compositions
for internal combustion engines. A difficulty associated with the idle-stop
function implemented in modem vehicles ( the engine stops running when
the vehicle stops at a traffic light) (Spec. 1, 11. 16-20), and with short-trip
driving, is that the engine lubricating oil does not get hot enough to expel
water created by combustion of the fuel that has become mixed into the
lubricating oil. (Id. at 1, 1. 28-2, 1. 3.) This effect is said to be further
enhanced by the use ofbiofuels that contain ethanol or ethyl tert-butyl ether,
which increases the hydrogen-to-carbon (H/C) ratio of the fuels, and thus
increases the amount of water produced as an end-product of combustion.
(Id. at 11. 16-21.)
Moreover, the ashless friction modifiers4 based on certain fatty acid
monoesters of glycerol ("monoglycerides") "are known to be highly
effective for reducing friction and to be suitable for engine lubricating oil
compositions." (Spec. 4, 11. 28-31.) However, the '837 Specification reports
that it has been "established that ... [ the certain] monoglycerides ...
increase anti-emulsifying properties or water separability in connection with
3 Application 14/417,837, Lubricating oil composition/or internal
combustion engines, filed 28 January 2015 as the national stage under
35 U.S.C. § 371 of PCT/EP2013/065884, which was filed 29 July 2013.
We refer to the "'837 Specification," which we cite as "Spec."
4 Ashless friction modifiers are said to have replaced prior art friction
modifiers that contain metals or phosphorus, which may harm exhaust
catalytic converters or diesel particulate filters. (Spec. 4, 11. 16-18.)
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Appeal2017-010899
Application 14/417,837
the aforesaid specific engine lubricating oils and make separation of the
water onto surfaces more prone to occur." (Spec. 5, 11. 26-33.) Hanyuda
seeks patent protection for lubricating oil compositions that further contain
an ethylene oxide adduct of an amine. The amine is said to provide
improved emulsion stability to the lubricating oil compositions. (Id. at 6,
11. 19--20.)
Claim 1 is representative and reads:
A lubricating oil composition for internal combustion engines
compnsmg:
(A) at least one base oil selected from the group consisting
of base oils of Groups 2, 3 and 4 in the API (American
Petroleum Institute) base oil categories with
a kinematic viscosity of from 3 to 12 mm2/s at 100°C and
a viscosity index of from 100 to 180,
(B) a monoglyceride with a hydrocarbon group having
from 8 to 22 carbon atoms ( a glycerine fatty acid ester with
the fatty acid ester bonded to one of the three hydroxyl
groups of the glycerine),
wherein the monoglyceride has
a hydroxyl value of from 150 to 300 mgKOH/g, and
wherein the monoglyceride is present at a level of
from 0.3 to 2.0 mass% based on the total mass of the
composition, and
(C) at least one ethylene oxide adduct selected from the
group consisting of monoalkyl and monoalkenyl amine
ethylene oxide adducts shown by Formula (1) below,
Formula ( 1):
R-N
\
(CH2CH20)m-H
(1)
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Appeal2017-010899
Application 14/417,837
wherein R is a C14---C22 hydrocarbon group, n and m are
independently either 1 or 2, and
wherein the ethylene oxide adduct is present at a level of
from 0.4 to 1.5 mass% based on the total mass of the
composition.
(Claims App., Br. 12; some indentation and paragraphing.)
The Examiner maintains the following ground of rejection 5, 6:
Claims 1-8 and 10-19 stand rejected under 35 U.S.C. § 103 in view
of the combined teachings of Moore 7 and Hartley. 8
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Hanyuda does not raise substantively distinct arguments for the
patentability of the claims. Accordingly, all claims stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2016). Hanyuda does not dispute the
Examiner's findings (OA 3) that Moore describes a lubricating oil
composition generically similar to the claimed composition. More
particularly, Hanyuda does not dispute the Examiner's findings (id.) that
Moore discloses a class of friction-modifying, polar, and surface-active
5 Examiner's Answer mailed 2 June 2017 ("Ans.").
6 Because this application claims the benefit of an application filed after the
16 March 2013, effective date of the America Invents Act, we refer to the
AIA version of the statute.
7 Lionel D. Moore, Fuel economy and oxidation inhibition in lubricant
compositions for internal combustion engines, U.S. Patent No. 5,286,394
(1994).
8 Rolfe J. Hartley et al., Lubricating oil composition, U.S. Patent
Application Publication 2002/0137636 Al (2002).
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Appeal2017-010899
Application 14/417,837
organic compound, of which recited component (B), the monoglyceride, 9
and component (C), the ethylene oxide adduct, 10 are members. Hanyuda
does not dispute the Examiner's finding (OA 3, 11. 14--16) that Moore, in
claim 1, recites both of these compounds as members of a small Markush
Group of named friction modifiers. (Id. at col. 12, 11. 30-33. 11 ) Nor does
Hanyuda dispute the Examiner's finding (OA 4, 11. 10-12) that Moore
discloses a range for the amount of friction modifier (about 0.5 to
about 2 w%; Moore col. 10, 11. 20-25) that encompasses the total amounts
of 0.7-3.5 mass% recited for components (B) and (C) in appealed claim 1.
Hanyuda also does not dispute the Examiner's conclusion that it would have
been obvious to select base oil viscosities according to the teachings of
Hartley.
Rather, Hanyuda urges the Examiner erred harmfully in concluding
that the claimed lubricating oil composition would have been obvious
because "[t]here is absolutely no evidence to suggest that one of ordinary
skill in the art would arrive at this specific combination based on the broad,
generic disclosure of Moore and Hartley," or that such a person would have
expected "any particular effect whatsoever or achieve any particular
9 Moore, col. 4, 11. 59---63, disclosing "mono and higher esters of polyols,
... "; id. at col. 5, 1. 24 ("glycerol monooleate").
10 "[p ]olyethoxylated amines, ... , the said amines and diamines containing
alkyl and alkenyl groups of from 2 to about 30 carbon atoms" (id. at col. 4,
11. 64--66), in particular, "bis(2-hydroxyethyl)-oleylamine" (id. at col. 6,
1. 12).
11 It may also be noted that glycerol monooleate ("GMO") and
bis(2-hydroxyethyl)oleylamine ("EA") are used as components of Test
Nos. 3 and 4 in Table 1. (Moore, col. 11, 11. 36-37.)
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Appeal2017-010899
Application 14/417,837
benefit." (Br. 6, last para.) Hanyuda expands the latter point in an argument
that unexpected results, illustrated in Tables 2 and 3 of the Specification
(reproduced in compact form in the Brief at pages 8 and 9), refute the
conclusion of obviousness. (Id. at 7-11.)
Regarding the selection of specific compounds, the Examiner adds
that Moore teaches that one of the compounds that meets component (B),
glycerol monooleate, is "preferred for economic reasons and reasons of easy
availability." (Ans. 5, 11. 8-10.) The weight of the evidence of record
supports the Examiner's conclusion that the preferred friction modifiers
taught by Moore is a relatively small set. This conclusion blunts the force of
Hanyuda's argument (Br. 6, 11. 25-26) that there is little to guide the artisan
to select particular components from a vast range of compounds disclosed
generically by Moore and Hartley. Moreover, Hanyuda has not controverted
the Examiner's reasoning, applied to the facts of this case, that the
combination of compositions, each known to be useful for the same purpose,
is generally obvious because "[t]he idea of combining them flows logically
from their having been individually taught in the prior art." (OA 4, 11. 5---6,
quoting In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1960).) On the present
record, we are not persuaded of harmful error in the Examiner's prima facie
case of obviousness.
Our reviewing court has long instructed "[i]t is well settled that
objective evidence or [ sic: of] non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support." In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (internal quote and citation
omitted). As the Examiner points out in the Final Rejection, there are
several instances in which the range of parameters, including the ratios of
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Appeal2017-010899
Application 14/417,837
component (B) to component (C) is from 0.5 to 5.0, while the Examples
provided in Table 2 cover only 1.2 to 2.25. (FR 3, 11. 5-8.) Moreover, there
are no examples in which there is more (C) than (B) (id. at 11. 12-14), and no
other compounds besides glycerol monooleate (component (B)) and oleyl
diethanolamine (component (C)) (id. at 11. 14--16). Nor are there any
examples of Group IV base oils, or of oils that comprise only a small amount
of a required base oil. (Id. at 11. 16-21.) While the full range need not be
exemplified, Hanyuda does not address the concerns raised by the Examiner,
or explain why the showing of record is adequate. Moreover, contrary to
Hanyuda's argument (Br. 10, 11. 12-16), Comparative Example 7, which
uses 0.90 mass% of the C12-lauryl diethanolamine, which is outside of the
C14-C20-compositional range for component (C), does show an
improvement in emulsifying performance ( there is no phase separation
after 24 hours at 0°C or at 25°C), as well as a wear scar diameter
of 0.37 mm, which is comparable to the results for the inventive samples
reported in Table 2. Thus, the case for unexpected results is not as strong as
urged by Hanyuda.
We conclude that harmful error in the rejection of obviousness has not
been demonstrated by a preponderance of the evidence of record.
C. Order
It is ORDERED that the rejection of claims 1-8 and 10-19 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).
AFFIRMED
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