Ex Parte Shinoda et al

Patent Trial and Appeal Board

Mar 13, 2018

13448054 (P.T.A.B. Mar. 13, 2018)

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.
13/448,054 04/16/2012 Noriaki SHINODA TS8124-US-DIV 9757
23632 7590 03/15/2018
SHF! T OH miUPANY
EXAMINER
P 0 BOX 576 OLADAPO, TAIWO
HOUSTON, TX 77001-0576
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/15/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIAKI SHINODA and EDI NAGATOMI
Appeal 2017-005822
Application 13/448,054
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 8, 2015 decision finally rejecting claims 1, 4, and 6—82 as
unpatentable under 35 U.S.C. § 103(a). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Shell Oil Company (Br. 2;
we note that the pages of the Brief are not numbered, but citations to the
Brief provided herein are based on page order).
2 Claim 5 has been canceled (Claims App.).
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Application 13/448,054
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to lubricating compositions for use
in diesel engines that use biofuels (Spec. 11). Claim 1 is representative and
is reproduced below from the Claims Appendix of the Brief (emphasis
added):
1. A method of operating a diesel engine comprising
lubricating the diesel engine with a lubricating composition and
using a biofuel as fuel, wherein the lubricating composition
comprises:
a base oil belonging to Group III or Group II of the API
base oil categories,
from 0.5 to 5% by mass of a phenolic anti-oxidant that is
a 6-methylheptyl alcohol ester of 3-(4-hydroxy-3,5-di-t-butyl-
phenyl)propionic acid, and
from 0.5 to 5% by mass of an amine-based anti-oxidant
that is a diphenylamine which is a reaction product of N-
phenylbenzeneamine and 2,4,4-trimethylpentene,
wherein the total content of the phenolic anti-oxidant and
the amine-based anti-oxidant is at least 2.5% by mass.
(Claims App.)
DISCUSSION
The only rejection on appeal is the rejection of claims 1, 4, and 6—8
under 35 U.S.C. § 103(a) as unpatentable over Gatto3 in view of Mackney,4
as evidenced by Chemical Book Antioxidant 5057,5 and further in view of
3 Gatto et al., US 2005/0192455 Al, published Sept. 1, 2005.
4 Mackney et al., US 2005/0215441 Al, published Sept. 29, 2005.
5 Chemical Book, Antioxidant 5057,
http://www.chemicalbook.com/ChemicalProductProperty_EN_CB2110783.
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Application 13/448,054
George.6 Appellants’ arguments are directed to limitations recited in
independent claim 1 and they do not offer separate arguments in support of
any of the dependent claims (see generally Br. 3 4). Accordingly, our
discussion will focus on the rejection to claim 1.
Appellants do not dispute the Examiner’s findings with respect to the
teachings of Mackney, as evidenced by Chemical Book Antioxidant 5057,
and George (see generally id. at 2—3; Ans. 3—8). Rather, Appellants’
arguments focus on the Examiner’s findings with respect to Gatto’s
teachings.
The Examiner finds that Gatto teaches diesel engine oil compositions
containing: (i) a hindered phenolic alkyl ester antioxidant and (ii) a
supplemental aromatic amine antioxidant (Ans. 3 (citing Gatto H 2, 32, 36,
141)). The Examiner further finds, and Appellants do not dispute, Gatto
teaches that “hindered phenolic antioxidant can be present in amounts of
from 0.001 to 90% ... by weight of the composition which overlaps the
claimed limitations (Ans. 3 (citing Gatto 1158)). Thus, according to the
Examiner, “when supplemental aminic antioxidant is mixed with phenolic
antioxidant, their combined amounts which is greater than the 0.001 to 90%
phenolic antioxidant alone, provides amounts overlapping the claimed
range” (Ans. 6).
The Examiner further finds Gatto teaches “in one embodiment” that
the disclosed “composition can comprise a mixture of phenolic antioxidant
and aminic antioxidant each present in amounts of from 0.1 to 1%” by
weight of the composition of antioxidant (id. at 6 (citing Gatto 1160)). The
Examiner finds that Gatto’s range for each antioxidant in this embodiment
6 George et al., US 2004/0266630 Al, published Dec. 30, 2004.
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Application 13/448,054
overlaps the claimed limitations for each antioxidant (Ans. 3). With respect
to the mixture of phenolic and aminic antioxidants, the Examiner finds that
Gatto’s “total content. . . can be present at 2% or greater by weight which
overlaps the claimed limitations” (id.).
Appellants make the following principal arguments: (1) the
Examiner’s proposed “combination fails to teach or suggest a method of
lubricating a diesel engine using a lubricant comprising ‘from 0.5 to 5% by
mass of a phenolic anti-oxidant’ and ‘from 0.5 to 5% by mass of an amine
based anti-oxidant’, ‘wherein the total content of the phenolic anti-oxidant
and the amine-based anti-oxidant is at least 2.5% by mass’” (Br. 3); (2) “the
Examiner has failed to provide sufficient reasoning as to why a person of
ordinary skill in the art would have been motivated to modify [Gatto’s]
compositions . . . such that the ‘total content of the phenolic anti-oxidant and
the amine-based anti-oxidant is at least 2.5% by mass’” (id. at 4); (3) Gatto’s
“Examples . . . are directed to the preparation of the hindered phenolic esters
and in no way relate to their performance as antioxidants in lubricating
compositions for diesel engines, especially when a biofuel is used” (id. at 3);
(4) “[rjather than disclosing a lubricant composition having a total content of
at least 2.5% by mass of a phenolic antioxidant and an amine-based anti­
oxidant, Gatto discloses ... a total anti-oxidant content of from 0.2% to
2.0% by weight” (id. at 4); and (5) “the proposed modification to [Gatto’s]
lubricating oil compositions . . . would amount to extra work and greater
expense for no apparent reason” (Id.).
Appellants’ arguments are not persuasive.
With regard to argument (1), there is no dispute that Gatto explicitly
discloses “that when a hindered phenolic ester is used in combination with
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Application 13/448,054
an alkylated diphenylamine, the lubricating composition comprises from 0.1
to 1% by weight of the alkylated diphenylamine and from 0.1 to 1% by
weight of the hindered phenolic ester” (Br. 4; see also Ans. 3 (citing Gatto
1160)).
It is well established that:
a prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior
art. [Citations omitted.] Where the “claimed ranges are
completely encompassed by the prior art, the conclusion [that
the claims are prima facie obvious] is even more compelling
than in cases of mere overlap.”
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003)). In this instance, Appellants’
arguments have not identified reversible error in the Examiner’s findings
that Gatto’s 0.1 to 1% by weight of each antioxidant sufficiently overlaps the
claimed 0.5 to 5% by mass of each antioxidant.
Regarding arguments (2) and (4), the Examiner does not specifically
dispute that the claimed “at least 2.5% by mass” is different from the amount
of about 2% suggested in Gatto’s 1160, but finds that, using the reasoning
of Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985), the
two values (2% and 2.5%) are close enough that one skilled in the art would
have expected them to have the same properties (Ans. 7). Appellants do not
dispute this finding and, therefore, do not identify reversible error in it.
Based on the evidence of record and using the preponderance of the
evidence standard, we determine that Appellants have not demonstrated
reversible error in the Examiner’s determination that the claimed range of
the total content of phenolic and amine-based antioxidants would have been
obvious in view of Gatto’s disclosures.
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We are not persuaded by argument (3). It is well established that a
reference is not limited to its examples or preferred embodiments. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(holding that the prior art’s disclosure of over 1200 possible combinations
rendered all possible formulations obvious). Thus, that Gatto’s examples
may be directed to the preparation of the hindered phenolic esters and do not
directly relate to their performance as antioxidants in lubricating
compositions for diesel engines does not demonstrate reversible error in the
rejection.
Argument (5) is supported only by attorney argument, not factual
evidence, and, therefore, is not persuasive. Arguments of counsel cannot
take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979).
Accordingly, we affirm the rejection of claims 1, 4, and 6—8 for the
reasons set forth above. 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We AFFIRM the rejection of claims 1, 4, and 6—8 under 35 U.S.C.
§ 103(a) as obvious over Gatto in view of Mackney, as evidenced by
Chemical Book Antioxidant 5057, and further in view of George.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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