Ex Parte Shaw et al

Patent Trial and Appeal Board

Jun 11, 2014

11436779 (P.T.A.B. Jun. 11, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/436,779 07/10/2006 Robert W. Shaw 2005M010 8436
25553 7590 06/11/2014
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
06/11/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT W. SHAW, ANGELA J. KEENEY, and
CHRISTOPHER J. LOCKE
____________

Appeal 2012-011659
Application 11/436,779
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections of claims 1 and 4-9 under the 2nd paragraph of 35 U.S.C. § 112 as
indefinite and under 35 U.S.C. § 103(a) as unpatentable over Mackney
(US 2005/0215441 A1 published Sept. 29, 2005) in view of Pieprzak
(US 4,867,113 issued Sept. 19, 1989). We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.
Appellants claim a method of lubricating an internal combustion
engine having a cam and a rotating tappet using a lubricant having a
particular composition, "said lubricant being free of effective amounts of
any boundary layer lubricant additive that lowers friction coefficients"
Appeal 2012-011659
Application 11/436,779

2
(independent claim 1). Appellants also claim an internal combustion engine
having a rotating tappet lubricated with the aforenoted lubricant
(independent claim 9).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method of lubricating an internal combustion
engine having a cam and a rotating tappet, the method
comprising employing as the lubricant for the engine a
lubricating composition comprising a base oil of lubricating
viscosity, phosphorus in an amount of from 50 to 900 ppm by
mass, sulfur in an amount of from 1500 to 3000 ppm by mass,
boron in an amount of from 0.0 to 100 ppm, sulphated ash in an
amount not exceeding 1.0 mass %, said lubricant being free of
effective amounts of any boundary layer lubricant additive that
lowers friction coefficients.
Appellants do not present separate arguments specifically directed to
dependent claims 4-8 (Br. 4-8). Therefore, these dependent claims will
stand or fall with their parent independent claim, which is representative
claim 1.
We sustain each of the above rejections for the reasons well stated by
the Examiner in the Final Office Action and in the Answer, with the
following comments added for emphasis.
According to the Examiner, the appealed claims violate the 2nd
paragraph of § 112 because Appellants' Specification fails to disclose how to
determine the amounts of friction modifier (i.e., boundary layer lubricant
additive) encompassed by the independent claim phrase "effective amounts"
(see, e.g., Ans. 4-5).
Appeal 2012-011659
Application 11/436,779

3
Appellants argue that "the amended language [i.e., "effective
amounts"] is actually clearer and more definite than the language of the
original claims" (Br. ¶ bridging 4-5).
Even assuming the phrase "effective amounts" is "clearer and more
definite than the language of the original claims" (id.), such circumstance is
irrelevant to whether this claim phrase satisfies the 2nd paragraph
requirements of § 112. Moreover, as correctly indicated by the Examiner,
Appellants fail to identify any guidance or standard disclosed in their
Specification, or otherwise known to one with ordinary skill in this art, for
determining the amounts of friction modifier encompassed by the appealed
claims (Ans. 6). Based on the record before us, Appellants have not shown
error in the Examiner's § 112, 2nd paragraph, rejection.
In rejecting the claims under § 103, the Examiner finds Mackney
discloses a lubricant for internal combustion engines which satisfies the
composition requirements of claim 1 including the requirement that the
lubricant be free of effective amounts of a boundary layer lubricant additive
(i.e., a friction modifier additive) (see, e.g., id. at 5). Specifically regarding
this latter point, the Examiner finds paragraph 54 of Mackney discloses that
friction modifiers are an optional additive and that the additives in
Mackney's lubricating oil can range in amounts which overlap the "effective
amounts" of boundary layer lubricant additive encompassed by claim 1
(id.).1 The Examiner also finds that Mackney does not disclose lubricating

1 According to the Examiner, "[f]or the purposes of examination [i.e., under
§ 103], at least 0.1% by weight of friction modifier is considered to be an
'effective amount', in accordance with the claims as originally filed and
appellant's remarks dated 7/1/10" (FOA 2, Ans. 5).
Appeal 2012-011659
Application 11/436,779

4
an internal combustion engine having a cam and a rotating tappet
specifically but concludes that it would have been obvious to lubricate such
an engine with Mackney's lubricant in view of Pieprzak (id. at 6).
Appellants argue that one having ordinary skill in this art would not
have formulated the lubricant of Mackney without a friction modifier in
amounts greater than allowed by the independent claims (Br. 6-7).
We agree with the Examiner that Appellants' argument is not
persuasive (Ans. 7). In particular, the argument lacks persuasive merit
because it is contrary to the express teachings of Mackney and because it is
unsupported by evidence.
Appellants additionally argue that "[t]he effects of the present
invention are clearly demonstrated by the test data of the present
specification . . . [showing] unexpected results" (Br. ¶ bridging 7-8).
In their Appeal Brief, Appellants do not specifically identify this test
data or where it is located in the Specification. Further, although Appellants
state that "the comparative data of the present specification fully represents
the invention as now claimed" (id.), they do not identify any evidence which
supports this statement. For these reasons and those given by the Examiner
(Ans. 7-8), Appellants fail to provide the record before us with evidence of
nonobviousness that outweighs the Examiner's evidence of obviousness.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
bar