Ex parte PLACEK et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08026039 (B.P.A.I. Jun. 29, 1998)

Application for patent filed March 4, 1993.1
-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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DOUGLAS G. PLACEK and SUNDEEP G. SHANKWALKAR
________________
Appeal No. 95-2149
Application No. 08/026,0391
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
14, all the claims in the present application. Claim 1 is
illustrative:
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Application No. 08/026,039
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1. An improved fire resistant hydraulic base fluid
composition having a specific gravity of less than 1.03, and a
four-ball wear scar of less than .9 mm, the improvement
consisting essentially of 1 to 12 parts by weight of a
trialkoxyalkyl phosphate ester, each alkoxyalkyl moiety
containing about 6 to 10 carbon atoms, and 1 part by weight of
an ester or a mixture of esters selected from the group
consisting of a trialkyl ester of phosphoric acid and C4-C8
alkyl alcohols, a triaryl phosphate ester wherein the aryl
groups are partially C3 to C4 alkylated phenols, and a
trialkyl phosphite ester having a pour point of less than -
50EC, each alkyl group of the trialkyl phosphite ester
containing from 8 to 12 carbon atoms.
The examiner relies upon the following references as
evidence of obviousness:
Sheratte (Sheratte '324) 3,849,324 Nov. 19, 1974
Sheratte (Sheratte '129) 4,001,129 Jan. 4, 1977
Takao et al. (European '932) 0 135 932 Apr. 3, 1985
(European patent application)
Appellants' claimed invention is directed to a fire
resistant hydraulic base fluid consisting essentially of a
trialkoxyalkyl phosphate ester and a trialkyl phosphite ester.
A suitable trialkoxyalkyl phosphate ester is tributoxyethyl
phosphate, while triisooctyl phosphite is an example of an
trialkyl phosphite ester.
Appealed claims 1-14 stand rejected under 35 U.S.C. § 103
as being unpatentable over European '932.
Appeal No. 95-2149
Application No. 08/026,039
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Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellants that the
examiner has not established a prima facie case of obviousness
for the claimed subject matter. Accordingly, we will not
sustain the examiner's rejection.
European '932 discloses a lubricant comprising (1) a
lubricating oil, such as mineral oil, (2) a condensed
phosphorus compound and (3) at least one organic compound
containing phosphorus, sulfur or chlorine as an extreme
pressure agent. In the paragraph bridging pages 6 and 7, the
reference discloses that the organic compounds containing
phosphorus for use as the extreme pressure agent can be
phosphite esters, such as triisooctyl phosphite, and phosphate
esters, such as tributoxyethyl phosphate. As a result of this
disclosure, the examiner concludes that "European patent '932
requires the presence of each of the claimed components in a
single composition" (sentence bridging pages 4 and 5 of
Answer). However, the examiner overstates the teaching of the
reference. European '932 actually teaches that the third
component can be at least one of organic compounds containing
phosphorus, sulfur or chlorine. When the organic compound is
Appeal No. 95-2149
Application No. 08/026,039
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one containing phosphorus, it can be selected from a quite
extensive list that includes triisooctyl phosphite and
tributoxyethyl phosphate, two compounds which make up the
claimed composition. Accordingly, it can be seen that the
examiner errs in stating that European '932 requires the
presence of the claimed components. Nonetheless, the
reference does render obvious within the meaning of § 103 a
lubricant comprising appellants' claimed components.
However, as urged by appellants, the claimed composition
is one "consisting essentially of" a trialkoxyalkyl phosphate
ester and a trialkyl phosphite ester. It is well settled that
claim language "consisting essentially of" limits the scope of
the claim to the ingredients specified therein and those that
do not materially affect the basic and novel characteristics
of the claimed composition. In re Herz, 537 F.2d 549, 551-52,
190 USPQ 461, 463 (CCPA 1976). In the present case, European
'932 discloses lubricating compositions comprising 100 parts
by weight of the lubricating oil, 2-20 parts by weight of the
condensed phosphorus compound and 5 to 30 parts by weight of
the organic compound containing phosphorus. On the other
hand, appellants' specification does not disclose that the
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Application No. 08/026,039
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inventive hydraulic fluid comprises lubricating oil as a base
component, nor does it disclose the inclusion of a condensed
phosphorus compound in any amount. Accordingly, we find it
abundantly clear that the addition of 100 parts by weight of a
lubricating oil and 2 to 20 parts by weight of a condensed
phosphorus compound to the claimed hydraulic fluid would,
indeed, materially affect the basic characteristics of the
claimed composition. Consequently, we do not subscribe to the
examiner's position that the claim language "consisting
essentially of" opens the claim to the inclusion of the
lubricating oil and condensed phosphorus compound of the
European reference.
The examiner's citation of the Sheratte references is
merely for the proposition that lubricating fluids and
hydraulic fluids are analogous art. However, these references
do not remedy the deficiencies of the European reference.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
Appeal No. 95-2149
Application No. 08/026,039
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)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 95-2149
Application No. 08/026,039
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FMC Corp.
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