Ex parte Mccready

Board of Patent Appeals and Interferences

Mar 30, 1998

07947569 (B.P.A.I. Mar. 30, 1998)

Application for patent filed September 21, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID F. McCREADY
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Appeal No. 95-3834
Application 07/947,5691
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ON BRIEF
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Before KIMLIN, GARRIS, and HANLON, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
Appeal No. 95-3834
Application No. 07/947,569
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Appeal No. 95-3834
Application No. 07/947,569
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
rejection of claims 1-12, all of the claims pending in the
application. Claims 1 and 9 are representative of the subject
matter on appeal and read as follows:
1. A dry engine oil additive comprising the mixture of a
granular metal alloy material and granular polytetrafluoro-
ethylene (PTFE), wherein the granules are micron to sub-micron
in diameter; the granulated metal alloy material for being
peened and burnished to bearing surfaces in an engine and the
PTFE granules for being embedded within the matrix formed
thereby.
9. The method of lubricating an engine and repairing
surface abrasions on bearing surfaces comprising adding a
supply of a mixture of a granulated metal alloy metal and
polytetra-fluoroethylene (PTFE) granules having micron to
submicron sizes to an oil supply within an engine, running the
engine for a time sufficient to cause the granules of the
granulated metal alloy material to be peened and burnished to
bearing surfaces within the engine, thereby embedding PTFE
granules within the matrix of granulated metal alloy material
formed by the peening and burnishing.
The references relied upon by the examiner are:
Cairns 3,994,814 Nov. 30, 1976
McCready 4,888,122 Dec. 19, 1989
The sole issue in this appeal is whether claims 1-12 were
properly rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of McCready and Cairns.
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The claimed invention
Appellant claims a dry engine oil additive comprising a
mixture of a granular metal alloy material and a granular
polytetrafluoroethylene. In a preferred embodiment of the
invention, titanium oxide or titanium dioxide granules may be
added to the mixture (Specification, p. 2). Claim 9 recites a
method of lubricating an engine and repairing surface
abrasions therein comprising (1) adding a supply of the
mixture of granulated metal alloy and polytetrafluoroethylene
to an oil supply within an engine and (2) running the engine
for a sufficient period of time to cause the metal alloy to be
burnished to bearing surfaces within the engine whereby the
polytetrafluoroethylene is embedded within the matrix of the
metal alloy.
Rejection under 35 U.S.C. § 103
Claims 1-12 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of McCready and Cairns. We
reverse this rejection.
McCready discloses an engine oil additive lubricant
comprising a first polytetrafluoroethylene powder, a second
polytetrafluoroethylene powder and titanium dioxide. The
Appeal No. 95-3834
Application No. 07/947,569
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lubricant disclosed in McCready does not contain a granular
metal alloy material.
Cairns relates to bearing compositions and a method of
forming the compositions into bearing elements. The bearing
compositions comprise a major portion of a thermoplastic resin
other than polytetrafluoroethylene and a minor portion of a
filled polytetrafluoroethylene material. The filled
polytetrafluoroethylene material comprises a polytetra-
fluoroethylene polymer, a first filler material and a second
filler material. The first filler material includes titanium
oxide, and the second filler material includes copper alloy
(col. 1, line 65-col. 2, line 15). Preferably, the bearing
materials are initially in dry powder form (col. 5, lines 3-
5). However, the materials are subsequently mixed together
and formed into bearings using injection molding and hot
extrusion methods (col. 2, lines 15-17).
According to the examiner (Answer, p.4):
One would have been motivated to . . . [modify the
dry powder lubricant of McCready by additionally
adding a metal alloy] because of the statement in
Carins [sic] at column 3, line 52: “The lubricant
[ie. the PTFE] is more effective by virtue of its
having something to hang onto as contrasted to just
being in contact with a smooth steel surface.”
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However, a closer reading of Cairns reveals that (col. 3,
lines
40-47):
The first filler material [e.g., titanium oxide], .
. . provides an anchor for the transfer film of
lubricating polytetrafluoroethylene. This holds the
lubricant to make maximum use of those properties
which result in an improvement in wear and low
friction.
Compare appellant’s specification, p. 2 (“The granulated alloy
material is peened and burnished to the bearing surfaces,
thereby entwining and embedding the granules of PTFE within a
matrix formed thereby.”); see also claim 9.
Therefore, we agree with appellant that nothing in the
Cairns reference teaches, suggests or motivates one of
ordinary skill in the art to add a metal alloy material to the
dry lubricant powders disclosed in McCready. See In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991) (in a determination under 35 U.S.C. § 103 it is
impermissible to simply engage in a hindsight reconstruction
of the claimed invention, using the applicant’s structure as a
template and selecting elements from references to fill the
gaps; the references themselves must provide some teaching
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whereby the applicant’s combination would have been obvious).
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Remand to the examiner
Upon return of this application to the examiner, the
examiner should determine whether the teachings of Cairns
alone anticipate or render obvious the composition of claims
1-8. As pointed out above, Cairns discloses a bearing
composition comprising a filled polytetrafluoroethylene
material wherein a first filler material may be titanium
dioxide and a second filler material may be a copper alloy.
Cairns further discloses that the polytetrafluoroethylene may
be granular or in the form of fine particles and the first and
second filler materials are preferably in the form of a fine
powder (col. 3, lines 21-24; col. 4, lines 3-8). See Exxon
Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558, 35
USPQ2d 1801, 1804 (Fed. Cir. 1995), cert. denied, 116 S. Ct.
2554 (1996)(claims drawn to a composition read on a
composition that contains the specified ingredients at any
time from the moment at which the ingredients are mixed
together and are not limited to the final end product).
Although the composition disclosed in Cairns contains an
additional thermoplastic resin, the claims do not exclude a
composition including other additional materials which are not
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claimed. In re Baxter 656 F.2d 679, 686, 210 USPQ 795, 802
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(CCPA 1981) (“the term ‘comprises’ permits the inclusion of
other steps, elements, or materials”).
Conclusion
For the reasons stated above, the rejection of claims 1-
12 as being unpatentable under 35 U.S.C. § 103 over the
combined teachings of McCready and Cairns is reversed. The
case is remanded to the examiner to consider whether the
teachings of Cairns alone either anticipate or render obvious
the composition of claims 1-8.
REVERSED AND REMANDED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
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Application No. 07/947,569
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James C. Wray
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McLean, Virginia 22101