Ex Parte Matsubara et al

Patent Trial and Appeal Board

Oct 11, 2016

13807604 (P.T.A.B. Oct. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/807,604 12/28/2012
23117 7590 10/13/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Kenichiro Matsubara
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.
GPK-4849-50 9952
EXAMINER
V ASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
10/13/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHIRO MATSUBARA, TERASU YOSHINARI,
RYO AIDA and JUNICHI IMAI
Appeal2015-003705
Application 13/807,604
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
JULIA HEANEY Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 1-15 of Application 13/807,604
under 35 U.S.C. § 102(b) as anticipated by Nakatani,2 or in the alternative,
under 35 U.S.C. § 103(a) as unpatentable over Nakatani. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Kyodo Yushi Co, Ltd. App.
Br. 3.
2 Nakatani et al., US 2009/0003742 Al, published Jan. 1, 2009 (hereinafter
"Nakatani").
Appeal2015-003705
Application 13/807,604
BACKGROUND
The subject matter on appeal relates to a grease composition
comprising a base oil, a thickener, and a rust inhibitor. App. Br. 4. The
grease composition may be used to lubricate bearings such as roller bearings
found in a corrosive environment, for example automotive electrical
equipment. Id, at 4-5. Claim 1, reproduced below from the Claims
Appendix of the Appeal Brief, is representative of the subject matter on
appeal:
1. A grease composition comprising a base oil, a thickener and
a rust inhibitor,
wherein the rust inhibitor comprises an organic sulfonate
and a fatty acid amine salt,
wherein the base oil is selected from the group consisting
of ester type synthetic oils, synthetic hydrocarbon oil, ether type
synthetic oil and combinations thereof,
wherein the thickener is an urea compound or lithium
soap, and
wherein the organic sulfonate is in the form of a metal
salt selected from the group consisting of calcium salts,
magnesium salts, sodium salts, potassium salts, lithium salts
and zinc salts.
App. Br. 15 (Claims Appendix).
DISCUSSION
Anticipation Rejection
The Examiner finds that Nakatani's Example El in combination with
other portions of N akatani' s disclosure anticipates claims 1-15. Final Act.
3--4. The Examiner acknowledges that the formulation of Example El
includes mineral oil, and does not include a base oil from the Markush group
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Application 13/807,604
of synthetic oils recited in the claims, but takes the position that many other
example formulations ofNakatani disclose synthetic ester base oils,
synthetic hydrocarbon base oils, and ether base oils as recited in claim 1.
Final Act. 4; Ans. 4-6.
Appellants argue Nakatani does not anticipate because the base oil in
the formulation of Example E 1, mineral oil, is excluded from the Markush
group of synthetic oils recited in claim 1. App. Br. 9-10. Appellants further
argue that the Examiner's reliance on other embodiments ofNakatani, such
as Nakatani's First Embodiment, is not permissible in an anticipation
rejection. Id. at 10.
Appellants' argument is persuasive of reversible error. The Examiner
harmfully erred in combining parts of the separate embodiments ofNakatani
in finding claims 1-15 anticipated. "Anticipation requires the presence in a
single prior art disclosure of all elements of a claimed invention arranged as
in the claim." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008) (citations omitted); see also In re Arkley, 455 F.2d 586, 587
(CCPA 1972) ("[R]ejections under 35 U.S.C. § 102 are proper only when
the claimed subject matter is identically disclosed or described in the prior
art." (emphasis and internal quotation marks omitted)). Without resort to
improperly choosing and combining various parts of N akatani, as discussed
above, Nakatani does not anticipate. Accordingly, we reverse the
anticipation rejection.
Obviousness Rejection
Appellants argue that a person of ordinary skill would have
understood Nakatani as teaching away from the use of synthetic oils with
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Application 13/807,604
sulfonates and thus Nakatani does not render obvious claim 1 or any of its
dependents. App. Br. 12-13. In particular, Appellants point to Nakatani's
Comparative Examples B3, D3, G3, and H3 as compositions including a
poly-a-olefin synthetic oil and barium sulfonate which have an unacceptable
level of waterproofness. Id.
Having considered Appellants' argument against the rejection in light
of the Examiner's findings as to Nakatani, we find that a preponderance of
the evidence supports the conclusion that Nakatani's teaching as a whole
would have led a person of ordinary skill to combine an organic sulfonate
with a synthetic oil, and the other components recited in the grease
composition of claim 1, for the reasons explained in the Answer. Ans. 4-5.
As the Examiner correctly finds, Nakatani throughout its disclosure
discusses the use of synthetic oils, such as poly-a-olefin base oil,
interchangeable with mineral oils. Id., citing Nakatani iJ 96, Examples A2,
A3, B2, D2, G2, and H2. Moreover, the Comparative Examples relied upon
by Appellants only relate to base oils formulated from a combination of
poly-a-olefin and mineral oil, which does not conclusively show that all
synthetic oils encompassed by claim 1 would give bad flaking results in a
waterproofness test. As the Examiner correctly finds, there is no way to
determine from the Comparative Example data cited by Appellants "which
base oil is causing the issues with waterproofness." Ans. 6. Accordingly,
we affirm the§ 103 rejection.
SUMMARY
We reverse the rejection of claims 1-15 as anticipated by N akatani
under 35 U.S.C. § 102(b).
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Appeal2015-003705
Application 13/807,604
Â¥1 e affirm the rejection of claims 1-15 as unpatentable over Nakatani
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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