Ex Parte KOBAYASHI et al

Patent Trials and Appeals Board

Mar 15, 2019

14900628 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/900,628 12/22/2015
23632 7590 03/19/2019
SHELL OIL COMPANY
POBOX576
HOUSTON, TX 77001-0576
FIRST NAMED INVENTOR
Izumi KOBAYASHI
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.
SP0360-US-PCT 1136
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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 IZUMI KOBA YSHI, KIYOSHI HANYUDA, and
YOSHIHIKO AIHARA
Appeal2018-005514
Application 14/900,628
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREYR. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-8 and 10-20 under 35 U.S.C.
§ 103(a) as obvious over Nagatomi. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we cite to the Specification of December 22,
2015 (Spec.), Final Office Action of June 7, 2017 (Final), Appeal Brief of
December 5, 2017 (Appeal Br.), Examiner's Answer of February 26, 2018
(Ans.), and Reply Brief of April 26, 2018 (Reply Br.).
2 Appellant is the applicant under 37 C.F.R. 1.46, Shell Oil Company, which
is also identified as the real party in interest. Appeal Br. 2.
3 Nagatomi et al., WO 2008/092945 Al, published Aug. 7, 2008.
Appeal2018-005514
Application 14/900,628
The claims are directed to a lubricating oil additive (see, e.g., claims 1
and 19) and a lubricating oil composition containing the lubricating oil
additive (see, e.g., claims 10 and 20). Claim 1 is illustrative:
1. A lubricating oil additive comprising an organic
molybdenum compound represented by general formula (1)
below:
wherein in formula (1 ), RI denotes a straight chain or
branched chain alkyl group represented by the general formula
CnH2n+1 (n is a positive integer) or a cyclohexyl group, R2
denotes a methyl group or an ethyl group, and RI and R2 are
different.
Appeal Br. 7 (claims appendix).
OPINION
The main issue on appeal applies to all the claims and we select
claim 1 as representative for resolving this issue.
As found by the Examiner and not disputed by Appellant, the
Nagatomi published application, like Appellant's present application, is
directed to an organic molybdenum compound used as a lubricating oil
additive to adjust frictional properties. Compare Final 2, with Appeal Br. 3-
4; also compare Spec. 1:2-7, with Nagatomi 1: 1-3. Nagatomi teaches
molybdenum compounds of the following formula:
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Appeal2018-005514
Application 14/900,628
where Al and A2 are groups each selected individually from the group
comprising heterocyclic rings and dialkylamino groups. Nagatomi 2:22-3:4.
Nagatomi further discloses that in one preferred embodiment A1 is -N(R10,
R 11) and A2 is-N(R10', R 11 ) and R 10, R 11 , R 10', and R 11 ' are groups each
selected individually from the group comprising linear chain or branched
alkyl groups having from 1 to 30 carbon atoms. Nagatomi 3: 15-30. The
Examiner's conclusion of obviousness is based on the disclosure of this
genus of compounds, which includes the compounds of claim 1, and the
further disclosure in N agatomi of preferences for R 10, R 11 , R 10', and R 11 '.
Final 3.
Appellant contends that too many selections must be made to arrive at
the subgenus of claim 1 to support a conclusion of obviousness, and the
Examiner erred in finding that N agatomi teaches a preference for selecting
alkyl groups with from 1 to 8 carbons for R 10 and R 11 . Appeal Br. 3---6;
Reply Br. 2--4.
Appellant has not identified a reversible error in the Examiner's
rejection.
Although, as pointed out by Appellant, N agatomi breaks the genus of
compounds into six types (Types I, II, III, IV, V, and VI), as acknowledged
by Appellant, Nagatomi specifically discloses Type VI has dialkylamino
groups -N(R10, R 11 ) and-N(R10', R 11 ). Appeal Br. 4. This specifically
disclosed genus of lubricating oil additives encompasses the lubricating oil
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Appeal2018-005514
Application 14/900,628
additives of Appellant's claim 1. And it is the scope of the R 10, R 11 , R 10', and
R 11 ' groups suggested by N agatomi that is of most relevance to the question
of whether Nagatomi would have suggested to the ordinary artisan that the
subgenus of compounds of claim 1 would have been expected to have the
lubricating oil additive properties Nagatomi suggests are present for the
genus.
A preponderance of the evidence supports a determination that the
ordinary artisan would have expected to obtain lubricating oil properties
when selecting compounds from the subgenus of claim 1. Nagatomi
suggests that alkyl groups of 1 to 30 carbons are useful in the molybdenum
lubricating additive. Nagatomi 3: 15-20. This genus of alkyl groups is not
so large that it fails to suggest using methyl or ethyl in two of the four R
groups (e.g., R 10 and R 10) and two different alkyl groups in the other two R
groups (e.g., R 11 and R 11 ).
The evidence further supports the Examiner's finding that Nagatomi
suggests selecting alkyls of 1 to 8 carbons. In addition to the portion of
Nagatomi cited by the Examiner (Final 2-3, citing Nagatomi 14:7-11),
Nagatomi includes a list of preferences with 1 to 8 carbons for the
dialkylamino group-containing compound. Nagatomi 3:21-24. Although
the preferences do not have differing R 10 and R 11 groups, the list provides
some evidence that those of ordinary skill in the art would have understood
that the broader disclosure of R 10, R 11 , R 10', and R 11 ' groups selected
individually would have been expected to have the friction modifying effect
desired by Nagatomi. Appellant has not directed us to any evidence of
unexpected results.
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Appeal2018-005514
Application 14/900,628
Appellant has not identified a reversible error in the Examiner's
rejection of claim 1.
Appellant further contends that "with respect to dependent claims 5, 6,
14, 15 and independent claims 19 and 20, Nagatomi fails to disclose an
organic molybdenum compound wherein RI denotes a cyclohexyl group,
and R2 denotes a methyl group or an ethyl group." Appeal Br. 6. The
Examiner responds that "since Nagatomi discloses that alkyl groups of 1 to 8
carbon atoms are most desirable, and cyclohexyl groups contain six carbons,
this is encompassed by the range ofNagatomi." Ans. 5. Appellant does not
dispute this finding. Reply Br. 4. Thus, Appellant has not identified a
reversible error in the Examiner's rejection of claims 5, 6, 14, 15, 19, and
20.
CONCLUSION
We sustain the rejection of claims 1-8 and 10-20.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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