Ex Parte Li et al

Patent Trials and Appeals Board

Feb 26, 2019

14363355 - (D) (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. § 134(a) from
the Primary Examiner's final decision to reject claims 1-10. 2 We have
jurisdiction under 35 U.S.C. § 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).)
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Application 14/363,355
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a rejection under pre-AIA 35
U.S.C. § 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. § 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 "SURFONIC® 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.
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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 SURFONIC®
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 SURFONIC®
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 SURFONIC® 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,
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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
SURFONIC® 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)), SURFONIC®
PEA-25 surfactant has a structure that falls within formula (I)'s scope as
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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 SURFONIC® 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 SURFONIC® 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 SURFONIC® 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-
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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 SURFONIC® PEA-25 reacts with
anionic surfactant salts or acids. In this regard, Huntsman explicitly teaches
that SURFONIC® 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 SURFONIC® 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 SURFONIC® 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 SURFONIC® PEA-
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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
SURFONIC® 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 SURFONIC® 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. § 103(a) of claims 1-10 is
sustained. Therefore, the Examiner's final decision to reject claims 1-10 is
affirmed.
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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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