Ex Parte Rea et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10657687 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/657,687 09/08/2003 Salvatore Rea 2002L007A 1241
7590 09/29/2010
Infineum USA L.P.
Law Department
1900 East Linden Avenue
P. O. Box 710
Linden, NJ 07036-0710
EXAMINER
NERANGIS, VICKEY MARIE
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SALVATORE REA, MALCOLM WADDOUPS, ROLFE J.
HARTLEY, RICARDO A. BLOCH, MICHAEL D. HOEY, and GEORGE
C. L'HEUREUX
____________________

Appeal 2009-015251
Application 10/657,687
Technology Center 1700
____________________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and LINDA M.
GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-015251
Application 10/657,687

2
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to a lubricating oil composition
including a mixture of first and second rust inhibitors. Claim 1 is
illustrative:
1. A lubricating oil composition suitable for use in a four
stroke marine engine which comprises an oil of lubricating
viscosity containing an admixture of
(a) 1 - 3.75 wt.% of an ashless dispersant;
(b) a metal detergent;
(c) an oil soluble molybdenum compound in an amount
sufficient to provide 15 - 1,000 ppm molybdenum in the
composition;
(d) a zinc dialkyl dithiophosphate in an amount sufficient
to provide at least 1,200 ppm phosphorus in the composition;
(e) a rust inhibitor system comprising
(i) as a first rust inhibitor, an ethoxylated C4-C18
alkyl phenol having 2-10 moles of ethylene oxide
per mole
in combination with a second rust inhibitor selected
from the group consisting of
(ii) a glycerol ester of a C8-C22 fatty acid,
(iii) a half ester of a C8-C22 alkyl or alkenyl succinic
acid and a C2-C4 alkylene glycol and
(iv) a C8-C22 alkyl or alkenyl succinic acid or
anhydride; and
(f) optionally, a viscosity modifier, said composition
having a NOACK volatility less than 15%.
Appeal 2009-015251
Application 10/657,687

3
(Claim 1, emphasis and indenting added.)

The Examiner maintains, and Appellants seek review of, the
following rejections:
(1) The rejection of claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over US Patent No. 6,207,625 B1 ("Ogano") in view of US
Patent No. 3,893,168 ("Brehm") or US Patent No. 2,833,717 ("Whitacre");
and
(2) The rejection of claims 1-9 and 11-19 under 35 U.S.C. § 103(a)
over US Patent No. 6,444,624 B1 ("Walker") in view of US Patent No.
3,876,550 ("Holubec") and further in view of US Patent No. 3,893,168
("Brehm") or US Patent No. 2,833,717 ("Whitacre").2
II. DISCUSSION
To support each rejection, the Examiner cites evidence that rust
inhibitors of the first group and the second group claimed were known in the
art for use in lubricating oils (Ans. 3-6). The Examiner concludes based on
this evidence that “given that the prior art references teach the presently
claimed rust inhibitors, it would have been obvious to one of ordinary skill
in the art [to] utilize a combination of two or more, absent a showing of
unexpected or surprising results with respect to the combination.” (Ans. 7.)
There is really no question that the Examiner has established a prima
face case of obviousness. Appellants do not dispute that the rust inhibitors
were known in the art, and, as stated in In re Kerkhoven, “[i]t is prima facie

2 The Examiner withdrew a rejection based on obviousness double patenting
in light of the terminal disclaimer filed by Appellants with the Brief (Comm.
of Jun. 17, 2009).
Appeal 2009-015251
Application 10/657,687

4
obvious to combine two compositions each of which is taught by the prior
art to be useful for the same purpose, in order to form a third composition
which is to be used for the very same purpose.” In re Kerkhoven, 626 F.2d
846, 850 (CCPA 1980). Moreover, we agree with the Examiner that this is
the type of situation calling for a showing of unexpected results arising from
the combination to support patentability.
Appellants’ sole contention on appeal is that “[t]he Examiner seems to
dismiss the fact that the claimed invention claims a specific and novel rust
inhibitor system in combination with the other recited components [sic,
which] enables the claimed combination to exhibit superior rust
performance,” and, as evidence of this “superior rust performance,”
Appellants rely upon evidence submitted in an affidavit attached to the Brief
(Br. 4). However, because the Examiner determined that the affidavit did
not meet the requirements of 37 C.F.R. § 41.33, the Examiner did not enter it
(Ans. 7).
The affidavit is not before us on appeal and, therefore, we cannot
consider the evidence it contains. Therefore, we cannot say that the
Appellants have provided the necessary evidence on this record to overcome
the prima facie case of the Examiner.
III. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is affirmed.

Appeal 2009-015251
Application 10/657,687

5

V. TIME PERIOD FOR RESPONSE
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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INFINEUM USA L.P.
LAW DEPARTMENT
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