Ex Parte Kawamura et al

Board of Patent Appeals and Interferences

May 18, 2012

11411487 (B.P.A.I. May. 18, 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.
11/411,487 04/26/2006 Yasushi Kawamura TS8084 (US) 6745
23632 7590 05/18/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
VASISTH, VISHAL V
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
05/18/2012 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 YASUSHI KAWAMURA,
TOSHIKI SATOU, and KEIJI TANAKA
____________

Appeal 2010-012350
Application 11/411,487
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012350
Application 11/411,487

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention “relates to a lubricating grease composition
having improved friction properties and lubrication characteristics.”
(Spec.1). Claim 1 is illustrative of the subject matter on appeal:
1. A lubricating grease composition comprising base oil
and a blended thickener which comprises, as the thickener
constituents,
(a) one or more urea-type compounds;
(b) one or more fatty acid metal salts; and
(c) at least one type of amide compound selected from
the group comprised of aliphatic amides and aliphatic
bisamides shown by the general formulae (1) and (2):
R1CONH2 (1)
R1CONHR2NHCOR1 (2)
wherein R1 denotes a saturated or unsaturated alkyl group
having from 15 to 17 carbon atoms and R2 denotes a methylene
group or an ethylene group, and wherein the blending weight
proportions of (a), (b) and (c) are in the ratio of
a /(b + c) is in the range of from 0.20 to 10
wherein
(1) constituent (a) has a blending weight ratio in the
range of from of 1 to 10;
(2) constituent (b) has a blending weight ratio in the
range of from 0.5 to 2.5; and
(3) constituent (c) has a blending weight ratio in the
range of from 0.5 to 2.5.
Appellants request review of the following rejection from the
Examiner’s Final Office action (App. Br. 3):
Appeal 2010-012350
Application 11/411,487

3
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Kinoshita, US Patent Application Publication No. 2004/0198617, dated
October 7, 2004, in view of Kawamura, US Patent Application Publication
No. 2005/0020456, dated January 27, 2005.

OPINION
The dispositive issue on appeal is: Did the Examiner err in
determining that Kinoshita and Kawamura would have led one skilled in the
art to the lubricating grease composition of the invention comprising a base
oil and a blended thickener comprising three specific thickener constituents
in specified weight proportions and ratios as required by the process of
independent claim 1? 1
We answer this question in the affirmative and we REVERSE.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appellants’ invention is directed to a lubricating grease composition
comprising a base oil and a blended thickener comprising three specific
constituents (a), (b) and (c) which must be present in the blended thickener
in certain blending weight proportions, which are recited as limitations in
claim 1. (Claim 1; App. Br. 4).

1 We will limit our discussion to independent claim 1.
Appeal 2010-012350
Application 11/411,487

4
The Examiner found that Kinoshita teaches the thickener employed in
the ball joint grease compositions of the invention may be of any kind,
including urea and fatty acid metal soap thickeners. (Ans. 4-5; Kinoshita
[0023]). The Examiner found that Kinoshita further discloses oiliness agents
including stearylamide or oleylamide (both C18 aliphatic amides])could
optionally be included in the composition. (Ans. 5; Kinoshita [0038] and
[0042]). The Examiner found that “[t]he total amount of thickener disclosed
in Kinoshita is from 3 wt% to 30 wt% + up to 5 wt% of the oiliness agent =
3 to 35 wt% of total thickener.” (Ans. 5). The Examiner recognized that
Kinoshita does not explicitly disclose the urea and fatty acid metal salt
thickener components are blended together and used in amounts required by
the claimed invention. (Id. at 6-7). However, the Examiner found that
Kawamura discloses grease compositions that comprise 10 to 13 wt% of one
or more urea thickeners, and 0.5 to 10 wt% one or more stearic acid metal
salts. (Id. at 7). The Examiner concluded, “[b]ased on the ranges discussed
above and the formula as written the ranges above would overlap the
bending weight ratios for components (1), (2) and (3) of claim 1.” (Id.)
We agree with Appellants that the cited references disclose grease
compositions, however, they do not teach or reasonably suggest the
combination of all three thickener constituents in the weight proportions and
ratio necessary to achieve the unexpected and beneficial results of reducing
the irregular friction fluctuations demonstrated by the data in Tables 3 and 4
of the Specification.2 (App. Br. 6-7; Reply Br. 2). We also agree with

2 Appellants rely on the test results shown in the Specification, Tables 3 and
4, to demonstrate the inventive grease compositions exhibit substantially
reduced irregular friction fluctuations and display low and stable friction
Appeal 2010-012350
Application 11/411,487

5
Appellants that the Examiner has not provided an adequate explanation
derived from the cited prior art that would have led a person of ordinary skill
in the art to select the constituents of the blended thickener components in
the amounts required by the claimed invention. (Id.) In particular we note
that the Examiner’s basis for selecting the amount of “bisamide compound”
(the amides identified by the examiner are mono-amides, not bis-amides) to
be contained in the thickener is speculative at best. For example, the
Examiner states: “one of ordinary skill in the art generally uses bisaminde
[sic, bisamide] compounds in greases [sic, grease compositions] in a
concentration up to 5 wt% as an additive and therefore 0.1 wt% would be
within this specified concentration.” (Ans. 9). We find ourselves in
agreement with Appellants that
[T]he 0.1 wt% bisamide concentration was selected by the
Examiner not based on any specific teachings of the references
or knowledge in the prior art, but primarily because it could be
used in the calculation of a/(b+c) to arrive at an upper value that
overlaps the ratio range limitation in the present claims.
(Reply Br. 3-4).
For the foregoing reasons and those presented by Appellants, we
determine that the Examiner’s conclusion of obviousness is not supported by
the preponderance of the evidence. “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). Accordingly, the Examiner’s rejection of
claims 1-20 over the combination of Kinoshita and Kawamura is reversed.

characteristics compared to grease compositions which did not have the
three constituents of the blended thickener in the proportions and ratios
recited in the present claims. (App. Br. 4).
Appeal 2010-012350
Application 11/411,487

6
ORDER
The Examiner’s decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED

bar