Ex parte Papay

Board of Patent Appeals and Interferences

May 4, 1998

07709369 (B.P.A.I. May. 4, 1998)

Application for patent filed June 3, 1991.1
We observe that the claim amendment filed subsequent to2
the final rejection on August 22, 1994 (Paper No. 13) has not
been clerically entered notwithstanding the examiner's
authorization thereof in the advisory action mailed August 26,
1994 (Paper No. 14).
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ANDREW G. PAPAY
__________
Appeal No. 96-0306
Application 07/709,3691
__________
ON BRIEF
__________
Before GARRIS, PAK, and WARREN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1
through 25 and 33 through 48. The only other claims in the2
Appeal No. 96-0306
Application No. 07/709,369
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application, which are claims 26 through 32, stand withdrawn from
further consideration by the examiner.
The subject matter on appeal relates to a composition for
use in an automatic transmission fluid or a fluid for a wet brake
system or a friction-depending lubricant which comprises at least
one polyol selected from a specified grouping for increasing
dynamic and/or static coefficients of friction. The appealed
subject matter also relates to a method of increasing dynamic
coefficient of friction in the aforementioned environments via
the use of such polyols. This appealed subject matter is
adequately illustrated by independent claim 1 which reads as
follows:
1. In an oil-based functional fluid composition formulated
for use as an automatic transmission fluid or a fluid for a wet
brake system, the improvement pursuant to which said composition
contains a minor amount in the range of up to about 0.5 percent
by weight based on the total weight of the functional fluid
composition of at least one polyol selected from the group
consisting of ethylene glycol, 1,3-propylene glycol, 1,4-butylene
glycol, trimethylolpropane, pentaerythritol, 2-butene-1,4-diol,
cyclohexanedimethanol, and 1,2-alkanediols having from 3 to 6
carbon atoms in the molecule to increase the dynamic and/or
static coefficients of friction of the frictional surfaces of the
automatic transmission or wet brake system contacted by the
composition.
The references relied upon by the examiner as evidence of
obviousness are:
Jordan et al. 2,932,615 Apr. 12, 1960
(Jordan)
Appeal No. 96-0306
Application No. 07/709,369
3
White et al. 3,304,258 Feb. 14, 1967
(White)
Papay et al. 4,857,214 Aug. 15, 1989
(Papay)
Claims 1 through 8, 16 through 18, 22 through 25, 33 through
37 and 42 through 47 are rejected under 35 U.S.C. § 103 as being
unpatentable over White, and claims 9 through 15, 19 through 21,
38 through 41 and 48 are similarly rejected as being unpatentable
over White in view of Papay.
Claims 1 through 8, 16 through 18 and 22 through 25 are
rejected under 35 U.S.C. § 103 as being unpatentable over Jordan,
and claims 9 though 15, 19 through 21 and 48 are similarly
rejected as being unpatentable over Jordan in view of Papay.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the appellant
and the examiner concerning the above noted rejections.
OPINION
For the reasons set forth below, we cannot sustain any of
the rejections before us on this appeal.
The primary references to White and Jordan contain no
teaching or suggestion of compositions or the corresponding
methods relating to environments such as an automatic
transmission fluid or a fluid for a wet brake system as claimed
Appeal No. 96-0306
Application No. 07/709,369
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by the appellant. Rather, White's composition and method relate
to lubricants for use in drawing sheet metal, and Jordan's
composition and method relate to industrial or automotive gear
lubrication. Similarly, White and Jordan contain no teachings or
suggestions of employing polyols for increasing dynamic and/or
static coefficients of friction in accordance with the appealed
claims. Instead, the polyols of White are used for controlling
viscosity and soap-solubility whereas those of Jordan are for
increasing extreme pressure properties.
In this regard, the examiner argues that the appealed claim
recitation concerning "[t}he use as an automatic transmission
fluid, wet brake fluid, or friction-dependent lubricant is merely
intended use and is not a positive limitation of the claims"
(answer, page 5). We cannot agree. As correctly indicated by
the appellant, the claim recitation is not "merely intended use"
but instead is a limitation which further defines the
compositions in question. In order to carry his burden, the
examiner would have to show that the metal-drawing lubricants of
White and the extreme pressure lubricants of Jordan are at least
capable of being used as an automatic transmission fluid or a wet
brake fluid or a friction-dependent lubricant, and this the
examiner has not done. Thus, the mere fact that the primary
reference compositions include a polyol like the here claimed
Appeal No. 96-0306
Application No. 07/709,369
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compositions, albeit for a different purpose, is inadequate to
establish a prima facie case of obviousness.
In short, the primary references to White and Jordan do not
teach and would not have suggested compositions and methods of
the type here claimed which relate to an automatic transmission
fluid or a wet brake fluid or a friction-dependent lubricant and
which employs certain polyols in certain amounts in order to
increase dynamic and/or static coefficients of friction.
Moreover, these deficiencies of White and Jordan are not remedied
by the disclosure of Papay. It follows that we cannot sustain
any of the above noted § 103 rejections advanced by the examiner
on this appeal.
The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Chung K. Pak ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Charles F. Warren )
Administrative Patent Judge )
Mr. Dennis H. Rainear
Patent and Trademark Division
Ethyl Corporation
Appeal No. 96-0306
Application No. 07/709,369
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330 South Fourth Street
Richmond, VA 23219

Appeal No. 96-0306
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