Ex Parte Hartley et al

Patent Trial and Appeal Board

Dec 22, 2014

12418922 (P.T.A.B. Dec. 22, 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.
12/418,922 04/06/2009 Rolfe J. Hartley PF2009L001 9509
25553 7590 12/23/2014
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
VASISTH, VISHAL V
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
12/23/2014 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 ROLFE J. HARTLEY and PETER D. WATTS
____________

Appeal 2013-005259
Application 12/418,922
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision finally rejecting claims 1–14. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Infineum
International Limited, by means of an unrecorded assignment (Appeal
Br. 1).
Appeal 2013-005259
Application 12/418,922
2
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a lubricating oil composition
comprising three components: (1) an oil of lubricating viscosity, (2) a
viscosity modifier comprising one or more block copolymers having specific
monomers, and (3) a particular class of detergents (Abstract). Claim 1 is
representative and is reproduced below from the Claims Appendix of the
Appeal Brief:

1. A lubricating oil composition comprising a major amount
of oil of lubricating viscosity, and minor amounts of a viscosity
modifier comprising one or more block copolymers of
hydrogenated poly(monovinyl aromatic hydrocarbon) and
poly(conjugated diene) and one or more detergents comprising
one or more optionally substituted bridged hydrocarbyl phenol
condensates, or metal salts thereof.

REJECTIONS
(1) Claims 1–9 and 12–14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Diggs,2 as evidenced by Shaw.3
(2) Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diggs, as evidenced by Shaw, in view of Artman.4
Appellants do not make separate arguments with respect to any of the
claims recited in Rejection (1) (claims 1–9 and 12–14) (see, Br. 5–7).

2 Diggs et al., U.S. Patent Application Pub. 2008/0020955 A1, published
January 24, 2008.
3 Shaw et al, U.S. Patent Application Pub. 2005/0277559 A1, published
December 15, 2005.
4 Yokoyama et al., U.S. Pat. Pub. 2002/0139150 A1, published October 3,
2002.
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Application 12/418,922
3
Accordingly, our discussion with regards to Rejection (1) will focus on
claim 1.
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s determination that the subject matter of
claim 1 is anticipated by Diggs. Accordingly, we will sustain the
Examiner’s rejection for essentially those reasons expressed in the Answer,
and we add the following for emphasis.

REJECTION (1) – ANTICIPATION OVER DIGGS
The Examiner finds that Diggs discloses each of the elements set forth
in claim 1 (Ans. 3–4). In particular, the Examiner finds that Diggs discloses
a lubricant composition containing the three claimed components, i.e., an oil
of lubricating viscosity, a viscosity modifier, and a detergent (id., citing
Diggs ¶ 88). The Examiner also finds that Diggs discloses a viscosity
modifier which meets the requirements of the viscosity modifier set forth in
claim 1, as well as a detergent which meets the requirements of the detergent
recited in claim 1 (Ans. 4, citing Diggs ¶¶ 42, 81, 82).
Appellants acknowledge that each of the claimed limitations is found
in Diggs.5 However, Appellants argue that “the claimed compositions are
clearly not identically described, and arranged as in the current claims . . . a

5 Some of the limitations in the dependent claims (claims 8–9) are found in
Shaw. However, the detergents disclosed in Shaw are effectively described
in Diggs, which recites that “[l]ubricating oil compositions of the present
invention may also contain ashless (metal-free) detergents such as oil-
soluble hydrocarbyl phenol aldehyde condensates described, for example, in
US-2005-0277559-A1” (Diggs ¶ 42).
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Application 12/418,922
4
great deal of picking and choosing is necessary to replicate the present
invention from the broader teachings of [Diggs]” (Br. 7).
Appellants argue that the disclosure of Diggs is so broad that the
degree of “picking and choosing” necessary to arrive that the claimed
invention precludes an anticipation finding (Br. 5–7, citing In re Arkley, 172
USPQ 524 (CCPA 1972)). Appellants’ argument is not persuasive. Diggs
discloses an explicit example which includes each of the three claimed
components, indicating the inclusion of a detergent and a viscosity modifier,
without explicitly setting forth the exact identity of these components (Diggs
¶ 88). However, Diggs explicitly identifies the presently claimed viscosity
modifiers as being a “preferred embodiment” (¶ 82), and also explicitly
recites that the claimed detergent may be present (¶ 42). Accordingly, we
agree with the Examiner that “picking and choosing” – as set forth in Arkley
– is not required to arrive at the claimed invention. See, e.g., Wm. Wrigley
Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012)
(“While Shahidi discloses a number of different combinations of cooling and
flavoring elements, one of them is the combination of menthol, which
Shahidi identifies as one of the ‘most suitable’ flavoring agents, with WS–
23, which Shahidi identifies along with WS–3 as among a group of three
‘particularly preferred cooling agents,’” thus anticipating the claimed
combination of WS-23 and menthol.) Therefore, we determine that
Appellants have not shown reversible error in the Examiner’s finding of
anticipation over Diggs.

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Application 12/418,922
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REJECTION (2) – OBVIOUSNESS OVER DIGGS AND ARTMAN
Appellants rely on the arguments made in connection with the
anticipation rejection over Diggs (Br. 6). This argument is not persuasive
for the reasons set forth above in connection with Rejection (1). Appellants
also argue that a person of ordinary skill in the art would not seek to
combine the teachings of Artman and Diggs/Shaw because doing so “would
go against the teachings of [Diggs]” (id. at 7). This argument is not
persuasive because Appellants have not provided a credible explanation of
why combining Artman and Diggs would go against Diggs’s teachings. A
simple, unsupported assertion that the references are not properly combined
is not sufficient to show error in the rejection.
CONCLUSION
We AFFIRM the rejection of claims 1–9 and 12–14 under
35 U.S.C. § 102(b) as being anticipated by Diggs as evidenced by Shaw.
We AFFIRM the rejection of claims 10 and 11 under
35 U.S.C. § 103(a) as being unpatentable over Diggs as evidenced by Shaw,
in view of Artman.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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