14363355 (P.T.A.B. Feb. 26, 2019)

Ex Parte Li et al

Patent Trial and Appeal BoardFeb 26, 2019

14363355 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/363,355 08/25/2014 29089 7590 02/28/2019 HUNTSMAN PETROCHEMICAL LLC Legal Department 10003 WOODLOCH FOREST DRIVE THE WOODLANDS, TX 77380 FIRST NAMED INVENTOR XiaolongLi 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. 81767 9866 EXAMINER GOLOBOY, JAMES C ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 02/28/2019 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@Huntsman.com Diana_E_ Ortega@Huntsman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOLONG LI, WEI-YANG SU, and JUN FAN Appeal2018-003961 Application 14/363,355 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1-10. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Appellants identify the real party in interest as "Huntsman Petrochemical LLC" (Appeal Brief filed September 12, 2017 ("Br."), 3). 2 Br. 10-17; Final Office Action entered April 28, 2017 ("Final Act."), 2-5; Examiner's Answer entered December 14, 2017 ("Ans."), 2-9. Appeal2018-003961 Application 14/363,355 I. BACKGROUND The subject matter on appeal relates generally to water-miscible lubricating oil concentrates, which are used to prepare metalworking and cleaning fluids (Specification filed June 6, 2014 ("Spec."), 1, 7; Abstract). According to the Appellants, "[i]t has been surprisingly found that combination of [an ethoxylated ether amine and a base oil], when added to an aqueous medium, produces an aqueous emulsion that exhibits improved stability, good wetting and low foaming properties while also being environmentally friendly" (id. at 3). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A water-miscible lubricating oil concentrate comprising (i) 5% by weight to 20% by weight of an ethoxylated ether amine having the formula (I) /(CH2CH20)x-H R -(OCI-I2CH)v-N blb ""(CH2CH20)n:x-H (I) where R = a straight chain or branched alkyl group having from 8 to 22 carbon atoms; n = an integer from 2 to 30; x = an integer from 1 to 29; and y = an integer from 1 to 30; and (ii) greater than 40% by weight of a base oil where the % by weights are based on the total weight of the oil concentrate. (Br. 18 (Claims App'x).) 2 Appeal2018-003961 Application 14/363,355 II. REJECTION ON APPEAL On appeal, the Examiner maintains a rejection under pre-AIA 35 U.S.C. Â§ I03(a) of claims 1-10 as unpatentable over Kadokawa et al. 3 ("Kadokawa"), Huntsman, 4 and Smith et al. 5 ("Smith") (Ans. 2-9; Final Act. 2-5). III. DISCUSSION Rejection A. The Appellants argue the claims together (Br. 10-17). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. Â§ 4I.37(c)(l)(iv). As provided by this rule, claims 2-9 stand or fall with claim 1. The Examiner finds that Kadokawa describes a metal-processing agent in aqueous form (i.e., a metalworking fluid) including 1--40% by weight of a surfactant ( e.g., a nonionic surfactant) and up to 80% by weight of a base oil (Ans. 2-3). The Examiner acknowledges that Kadokawa does not disclose an ethoxylated ether amine having a structure falling within the specified structural formula recited in claim 1 (id. at 3). The Examiner finds further, however, that Huntsman teaches that "SURFONICÂ® PEA-25" surfactant, which has a structure that falls within the specified structural formula recited in claim 1 as evidenced by Smith, is an additive that imparts 3 US 2010/0093868 Al, published April 15, 2010. 4 Performance Products: Metalworking Chemicals, Americas Product Information, Huntsman 1-5, http://web.archive.org/web/ 20081204095243/http://www.huntsman.com/performance_ products/Media/MW _Americas_Product_lnformation. pdf. The Appellants do not dispute the Examiner's determination (Ans. 3; Final Act. 3) that this document was available as prior art on or before December 4, 2008. 5 US 6,617,303 Bl, issued September 9, 2003. 3 Appeal2018-003961 Application 14/363,355 corrosion resistance and alkalinity control in metalworking fluids (id. at 3--4, 7). Based on these findings, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art to use SURFONICÂ® PEA-25 as a surfactant or an amine additive in Kadokawa as an effective corrosion inhibitor in a manner consistent with Kadokawa's disclosure for the amine additive to impart corrosion resistance (Kadokawa ,r 51 ). The Appellants contend that "Kadokawa does not provide any teaching or suggestion that would have motivated one of ordinary skill in the art to include the ethoxylated ether amine of formula (I) in the water soluble metal processing agent" but, instead, discloses a metal processing agent that exhibits improved resistance to bacteria and fungus achieved by using an N,N,N'N'-tetraalkyldiamine compound (Br. 12). The Appellants argue that although Kadokawa further teaches nonionic surfactants as well as cationic and anionic surfactants, the nonionic surfactants "are preferably used in combination with an anionic surfactant" and do not include SURFONICÂ® PEA-25 (id. at 12-13). According to the Appellants, Smith teaches that "when ... an ethoxylated ether amine is blended with anionic surfactants (which Kadokawa discloses are preferably used in combination with nonionic surfactants), salts are formed between the ethoxylated ether amine and anionic surfactants which are corrosive in aqueous solutions" (id. at 13). The Appellants contend that, therefore, "one of ordinary skill in the art would not have found SURFONICÂ® PEA-25 nonionic surfactant to be advantageous in Kadokawa's water diluted metal processing agent since it would cause the metal it comes in contact with during metalworking applications to corrode" (id.). The Appellants urge that, because a number of selections must be made in order to arrive at the claimed subject matter, 4 Appeal2018-003961 Application 14/363,355 combining Kadokawa with Huntsman in light of Smith constitutes hindsight (id. at 13-14). Furthermore, the Appellants argue that the experiments reported in the Specification (Spec. 8-10 (Example 1)) provide evidence of unexpected results ( decreased foam resistance and cream volumes) sufficient to rebut a prima facie case of obviousness (Br. 14--16). We have fully considered the Appellants' arguments in light of the relied-upon evidence but find them insufficient to identify any reversible error in the Examiner's factual findings, analysis, and legal conclusion. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Kadokawa teaches a water-soluble metal-processing agent that includes, in addition to 0.5-30% by weight of a tetraalkyldiamine compound and up to 80% by weight of a base oil, 1--40% by weight of a surfactant ( cationic, anionic, and nonionic----either singly or in combination) (Kadokawa ,r,r 17, 40--42, 46, 59). Kadokawa teaches that the tetraalkyldiamine compound is included in an amount to provide "excellent microbial deterioration resistance and corrosion resistance" (id. ,r 51 ), thus indicating that improving corrosion resistance is an important goal. Although Kadokawa identifies several exemplary nonionic surfactants, it does not describe an ethoxylated ether amine having a structure falling within formula (I) as specified in claim 1. As the Examiner correctly finds (Ans. 3--4), Huntsman teaches that SURFONICÂ® PEA-25 surfactant provides alkalinity control and corrosion inhibition (i.e., corrosion resistance) when included in a metalworking fluid (Huntsman 2-3 ). As evidenced by Smith (Smith, col. 9, 11. 1-31) and as described in the current Specification (Spec. 8 (Example 1)), SURFONICÂ® PEA-25 surfactant has a structure that falls within formula (I)'s scope as 5 Appeal2018-003961 Application 14/363,355 recited in claim 1. Given these facts, we share the Examiner's conclusion that a person having ordinary skill in the art would have been prompted to add SURFONICÂ® PEA-25 surfactant as the nonionic surfactant component to Kadokawa's metal-processing agent in an amount that falls within the range recited in claim 1 in order to achieve alkalinity control and corrosion resistance, as taught by Huntsman. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."); Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945) ("Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle."); In re Leshin, 277 F.2d 197, 199 (CCPA 1960) ("Mere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, would be entirely obvious."). We find no merit in the Appellants' argument that Smith and Kadokawa would have dissuaded a person having ordinary skill in the art from using SURFONICÂ® PEA-25 surfactant as the nonionic surfactant in Kadokawa because Kadokawa prefers to use an anionic surfactant in combination with a nonionic surfactant (Kadokawa ,r 42) and Smith teaches that SURFONICÂ® PEA-25 would react with anionic surfactant salts or acids to form salts (Smith, col. 5, 11. 31-37; col. 18, 11. 41--48), thus rendering the metalworking fluid more corrosive. As the Examiner finds (Ans. 8), Kadokawa does not require an anionic surfactant to be present in the metal- 6 Appeal2018-003961 Application 14/363,355 processing agent as Kadokawa teaches that the cationic, anionic, and nonionic surfactants may be used singly or in combination (Kadokawa ,r 42). Furthermore, Smith's disclosures as cited by the Appellants do not attribute corrosion to the salts formed when SURFONICÂ® PEA-25 reacts with anionic surfactant salts or acids. In this regard, Huntsman explicitly teaches that SURFONICÂ® PEA-25 provides corrosion inhibition and, therefore, when added in an appropriate relative amount to metalworking fluids alone or combination with an anionic surfactant, would be expected to improve corrosion resistance. To the extent that such salts resulting from a reaction between SURFONICÂ® PEA-25 and anionic surfactant salts or acids give rise to corrosion, the Appellants' claim 1 does not preclude the presence of anionic surfactants (Spec. 3 ("[T]he term 'comprising' and derivatives thereof are not intended to exclude the presence of any additional component, step or procedure, whether or not the same is disclosed herein.")). Therefore, the claimed product would also be subject to the same disadvantage alleged to be present in such formed salts. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We also share the Examiner's view that the Appellants' proffered showing (Spec. 8-10 (Example 1)) to demonstrate unexpected results is insufficient. Example 1 purports to compare ( 1) oil concentrates consisting of a 95, 92, or 88% by weight of a paraffin-base oil and 5, 8, or 12% by weight of SURFONICÂ® PEA-25 against (2) oil concentrates consisting of 95, 92, or 88% by weight of a paraffin-base oil and 5, 8, or 12% by weight of four different commercially-available sodium sulfonate emulsifiers (id.). As reported in Tables 1-3, the concentrates that include SURFONICÂ® PEA- 7 Appeal2018-003961 Application 14/363,355 25 have lower "Foam Resistance(cm)" and "Cream Volume, ml" compared to the concentrates that include the sodium sulfonate emulsifiers. "Establishing that one ( or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of [the CCP A] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."' In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). As the Examiner correctly observes (Ans. 9), the Appellants' showing is not commensurate in scope with claim 1. Claim 1 reads on numerous ethoxylated ether amine species because "R," "n," "x," and "y" may be varied over a wide range of possibilities and "base oil" encompasses a wide variety of oils. By contrast, Example 1 is limited to a concentrate based on SURFONICÂ® PEA-25 and paraffin-base oil. Moreover, claim 1 recites "comprising," which by the Appellants' own admission, does not exclude any additional components, including compounds such as sodium sulfonate, which potentially could react and detrimentally affect SURFONICÂ® PEA- 25 's efficacy in terms of foam resistance and creaming volume. For these reasons, and those given by the Examiner, we uphold the Examiner's rejection as maintained against claim 1. IV. SUMMARY The Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1-10 is sustained. Therefore, the Examiner's final decision to reject claims 1-10 is affirmed. 8 Appeal2018-003961 Application 14/363,355 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 9