Ex Parte Smythe

Patent Trial and Appeal Board

Aug 2, 2018

14267950 (P.T.A.B. Aug. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/267,950 05/02/2014
25553 7590
INFINEUM USA L.P.
P.O. BOX7IO
LINDEN, NJ 07036
08/02/2018
FIRST NAMED INVENTOR
John H. Smythe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PF2013M004 5576
EXAMINER
V ASISTH, VIS HAL V
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
08/02/2018 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 JOHN H. SMYTHE
Appeal2017-009366
Application 14/267 ,950
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-7 of Application 14/267,950
under 35 U.S.C. § 102(a)(l) as anticipated. Final Act. (October 16, 2015).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we cannot sustain the Examiner's
anticipation rejection. Nonetheless, we affirm the rejection of claims 1-7 as
obvious within the meaning of§ 103. Because this basis for rejection differs
1 Infineum International Limited is identified as the real party in interest.
Appeal Br. 1.
Appeal2017-009366
Application 14/267 ,950
from that relied upon by the Examiner, we designate our affirmance as
constituting a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
BACKGROUND
The '950 Application describes a lubricant for a 4-stroke marine
diesel internal combustion engine of the type usually called a trunk piston
engine. Spec. 1. In such engines, a single lubricant, commonly referred to
as a trunk piston engine oil (TPEO), provides both crankcase and cylinder
lubrication. Id. Zinc dialkyl dithiophosphate (ZDDP) compounds are
known in the art as additives for TPEO that provide wear protection for the
gears and valve train in trunk piston engines. Id. The presence of water,
however, may destabilize the ZDDP, leading to phosphorus depletion. Id.
Because phosphorus is the key element for wear prevention, phosphorus
depletion is undesirable. Id. The '950 Application describes TPEO
compositions that balance phosphorus depletion with wear performance.
Claim 1 is representative of the '950 Application's claims and is
reproduced below from the Claims Appendix.
1. A trunk piston marine engine lubricating oil composition
of TBN in the range of 20 to 60 mg KOH/g for a medium-speed
compression-ignited marine engine which comprises or is made
by blending
(A) an oil-soluble metal dithiophosphoric acid salt
additive component, in a minor amount, which
component comprises 50 mole % or more of a zinc
dialkyl dithiophosphate where the alkyl group is a
C6 primary alkyl group; and
(B) an oil-soluble overbased metal detergent additive
component, in a minor amount; with
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Application 14/267 ,950
(C) an oil of lubricating viscosity in a major amount.
Appeal Br. 7.
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1-7 are rejected under 35 U.S.C. § I02(a)(l) as anticipated by
Chambard. 2 Final Act. 2.
DISCUSSION
Appellant argues for reversal of the rejection of claims 1-7 as a group.
Appeal Br. 3-8. Accordingly, we select claim 1 as representative. Claims
2-7 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejected claim 1 under 35 U.S.C. § I02(a)(l) as
anticipated by Chambard. Final Act. 2-3 ( citing Chambard Abstract, ,r,r 18-
20, 81-85, Table 1).
Appellant argues that the rejection should be reversed:
Appellant does not suggest that, somewhere within the
disclosure of the Chambard et al[.] application, each specific
element of the present claims is not included within the broader
classes of compositions to which the invention of the Chambard
et al. application can be applied, and that by judiciously picking
and choosing among to the isolated portions of the disclosure,
one could, if motivated, replicate the combination of elements
that the fines present invention. The need for such picking and
choosing, and the need for such motivation, however,
2 US 2005/0119140 Al, published June 2, 2005.
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Application 14/267 ,950
establishes that the reference fails to anticipate the present
claims under 35 USC Section 102.
Appeal Br. 4. In particular, Appellant relies upon In re Arkley, 455 F.2d
586, 587 (CCPA 1972) as holding that the need for any picking and
choosing amongst the various embodiments in a particular piece of prior art
renders an anticipation rejection as improper. See Appeal Br. 4--5 (quoting
Arkley).
The Examiner responds that this argument is not persuasive because
Chambard explicitly discloses n-hexyl (a C6 primary alkyl
group) as an example for the hydrocarbyl radicals of a ZDDP
additive. The fact that the reference does not use the n-hexyl
group in an example with ZDDP does not obviate the
anticipation rejection, as the entire reference document must be
considered.
Answer 4.
A reference that does not disclose a specific embodiment which
satisfies all of the claim limitations will nonetheless describe the claimed
invention within the meaning of§ 102 if it "clearly and unequivocally ...
[directs] those skilled in the art to [ the claimed invention] without any need
for picking, choosing, and combining various disclosures not directly related
to each other by the teachings of the cited reference." In re Arkley, 455 F.2d
5 86, 5 87 ( CCP A 1972) ( emphasis in original) ( quoted with approval in
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008)).
In this case, the Examiner correctly found that Chambard describes
several TPEO' s that might fall within the scope of claim 1 except that they
do not describe the precise ZDDP used in the formulation. See Chambard
Table 1 ( disclosing use of a generic ZDDP).
To find the disclosure of a will ZDDP containing primary C6
hydrocarbyl groups, the Examiner cites Chambard's paragraph 85, which
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Application 14/267 ,950
describes the use of ZDDP compound having hydrocarbyl groups with 1-18
carbon atoms. While hydrocarbyl groups with 2-8 carbon atoms are
described as particularly preferred, we determine that the Examiner has not
explained the direct relationship between the description in paragraph 85 and
Chambard's examples required by Arkley. Thus, we cannot sustain the
anticipation rejection.
NEW GROUND OF REJECTION
As discussed above, the Examiner found that Chambard describes
each of the elements of claim 1. We find that Chambard's description of the
use of C6 hydrocarbyl groups in a ZDDP as particularly preferred, see
Chambard ,r 85, would have provided motivation for a person having
ordinary skill in the art at the time of the invention to a formulated trunk
piston marine engine lubricating oil within the scope of claim 1. We,
therefore, conclude that the differences between the subject matter of claim
1 and the prior art would have been obvious to a person having ordinary skill
in the art at the time of the invention. Thus, we conclude that claim 1 is
prima facie obvious within the meaning of§ 103.
Furthermore, the Examiner found that Chambard describes each of the
limitations recited in independent claims 2-7. See Final Act. 2-3. Appellant
has not challenged these findings. See generally Appeal Br. We, therefore,
adopt them and conclude that claims 2-7 are prima facie obvious under
§ 103.
In the Appeal Brief, Appellant argues that the Specification
demonstrates unexpected results "sufficient to overcome any case of prima
facie obviousness that may be construed as established by the disclosure of
the Chambard et al. application." Appeal Br. 5.
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Application 14/267 ,950
We have considered the results presented in the '950 Application's
Specification. We do not consider these results sufficient to establish the
patentability of claims 1-7 by a preponderance of the evidence. First,
Appellant has not identified any evidence that the results reported in the
Specification would have been considered unexpected or surprising by a
person of ordinary skill in the art at the time of the invention. Nor can we
locate any such evidence. Second, the '950 Application's Specification's
"Background of the Invention" section states that a known problem in the art
was "to provide ZDDP's in TPEO's that constitute a good balance between
reducing phosphorus depletion in the presence of water and FZG wear
performance." Spec. 1. Thus, a person of ordinary skill in the art would
have been motivated to vary the ZDDP used in a TPEO to arrive at an
optimum balance between phosphorus depletion in the presence of water and
wear performance. Third, as the Examiner points out, see Answer 5,
Appellant's data is not commensurate in scope with claim 1 because it
provides test results for a single C6 hydrocarbyl-containing ZDDP.
In view of the foregoing, we reject claims 1-7 as obvious within the
meaning of§ 103.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-7.
Because our affirmance is based upon unpatentability pursuant to 35 U.S.C.
§ 103 rather than the basis asserted by the Examiner, this is a new ground of
rejection.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b), which provides that "[a] new ground of rejection pursuant
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Application 14/267 ,950
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . ..
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . ..
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 4I.50(b)
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