Ex Parte Strickland et al

Patent Trial and Appeal Board

Apr 27, 2017

13076586 (P.T.A.B. Apr. 27, 2017)

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.
PF2010M004 4019
EXAMINER
GOLOBOY, JAMES C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
13/076,586 03/31/2011
25553 7590 0-
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
Keith Strickland
04/27/2017 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 KEITH STRICKLAND and STUART J. MCTAVISH
Appeal 2015-004609
Application 13/076,5861
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—25.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is “Infmeum
International Limited” (Appeal Brief filed on October 21, 2014, hereinafter
“Br.,” 1).
2 Br. 2, 4—7; Final Office Action mailed on January 2, 2014, hereinafter
“Final Act.,” 2—3 (incorporating by reference Non-Final Office Action
mailed on July 19, 2013); Examiner’s Answer mailed on December 30,
2014, hereinafter “Ans.,” 2—9.
Appeal 2015-004609
Application 13/076,586
BACKGROUND
The subject matter on appeal relates to lubricating oil compositions,
e.g., automotive lubricating oil compositions for use in gasoline (spark-
ignited) and diesel (compression-ignited) internal combustion engines
(Specification, hereinafter “Spec.,” 1,11. 4—10; Abst.). Representative claim
1 is reproduced from the Appeal Brief (Claims Appendix), as follows:
1. A lubricating oil composition comprising:
(A) an oil of lubricating viscosity in a major amount; and
(B) an oil-soluble or oil-dispersible additive component (B)
as an additive in a minor amount, obtained or obtainable by the
reaction of at least one of an acylating agent, an alkylating
agent or an arylating agent with a compound of Formula I:
(Y)a (Y)a
Ar—eU---- (I)
wherein:
each Ar independently represents an aromatic moiety having 0
to 3 substituents selected from the group consisting of alkyl,
alkoxy, alkoxyalkyl, aryloxy, aryloxyalkyl, hydroxy,
hydroxyalkyl, halo and combinations thereof; each L is
independently a linking moiety comprising a carbon-carbon
single bond or a linking group;
each Y independently represents -OR1 or a moiety of the
formula H(0(CR2R3)n)yX-, wherein:
each R1 independently represents a C1 to C30 alkyl group or an
aryl group; each X is independently selected from the group
consisting of (CR4 R5)z, O and S; each R2, R3, R4 and R5
independently represents H, Ci to Ce alkyl or aryl; z is 1 to 10;
n is 0 to 10 when X is (CR4R5)Z with the proviso that when n is
0 then y is 1; n is 2 to 10 when X is O or S; and y is 1 to 30;
each a is independently 0 to 3, with the proviso that at least one
Ar moiety bears at least one group Y of the formula
H(0(CR2R3)n)yX-; and m is 1 to 100; and, wherein the
lubricating oil composition is contaminated with at least 0.3
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Appeal 2015-004609
Application 13/076,586
mass %, based on the total mass of the lubricating oil
composition, of a biofuel or a decomposition product thereof
and mixtures thereof.
REJECTIONS ON APPEAL
The claims on appeal stand rejected as follows:
I. Claims 1—11, 13—19, and 21—25 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Boffa (US 2009/0111721
Al, pub. Apr. 30, 2009) and Bera et al. (US 7,485,603
B2, iss. Feb. 3, 2009; hereinafter “Bera ’603”)
II. Claims 1—25 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Boffa and Bera et al. (US
2008/0194438 Al, pub. Aug. 14, 2008; hereinafter “Bera
’438”); and
III. Claims 1—11, 13—19, and 21—25 under the judicially-
created doctrine of obviousness-type double patenting as
unpatentable over claims 1—48 of Bera ’603 and Boffa.
(Ans. 2—9; Final Act. 2—3.)
DISCUSSION
The Appellants rely on the same arguments for all three rejections and
for all claims subject to each rejection (Br. 5—7). Therefore, the claims
subject to each rejection stand or fall together with claim 1, which we select
as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Boffa describes every limitation recited in
claim 1 (including the requirement that “the lubricating oil composition is
contaminated with at least 0.3 mass %, based on the total mass of the
lubricating oil composition, of a biofuel or a decomposition product
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Appeal 2015-004609
Application 13/076,586
thereof’) except for “additive component (B)” as specified in the claim
(Ans. 2). The Examiner finds further, however, that Boffa teaches that the
compositions may also comprise any dispersant known to a person having
ordinary skill in the art (id.). The Examiner then finds that Bera ’603 and
Bera ’438 teach that compounds encompassed by “additive component (B)”
as defined in claim 1 are effective dispersants in lubricating oil compositions
for diesel engines (id. at 2—7). Based on these findings, the Examiner
concluded that it would have been obvious to a person having ordinary skill
in the art to use the dispersants disclosed in Bera ’603 or Bera ’438 as
dispersants in Boffa because Boffa suggests that any dispersant suitable for
lubricating oil compositions would provide successful results (id. at 4, 6—7).
The Appellants do not dispute the Examiner’s findings (Ans. 2—3, 5—
6) that the Bera references disclose dispersant compounds that fall within the
scope of the Appellants’ “additive component (B)” as specified in claim 1
(Br. 6). Rather, they contend that the Bera references do not describe the
dispersant compounds as being capable of preventing sludge and varnish
formation, as required by Boffa, but instead disclose them as soot
dispersants (Br. 6). Specifically, the Appellants argue that soot dispersants
are distinct from the known class of compounds conventionally used as
sludge dispersants and, therefore, “cannot be considered ‘dispersants’ in the
context of the Boffa [reference]” (id.). According to the Appellants, “[s]oot
agglomeration is not a problem associated with biofuel-contaminated engine
lubricants” (id.).
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Application 13/076,586
Boffa discloses that the lubricating oil compositions “can optionally
comprise a dispersant that can prevent sludge, varnish, and other deposits by
keeping particles suspended in a colloidal state” (| 83) (emphases added).
A person having ordinary skill in the art would not have understood this
disclosure to mean that a given dispersant, when present, must necessarily be
capable of dispersing all solids—i.e., “sludge, varnish, and other deposits.”
Rather, in view of Boffa’s disclosures that the dispersants are optional and
that any dispersant known to a person having ordinary skill in the art may be
used {id.), the preponderance of the evidence supports the Examiner’s
determination that a person having ordinary skill in the art would have
reasonably expected Bern’s soot dispersants to provide successful results
when used in Boffa. Here, Boffa discloses that the optional dispersant can
be a sludge and varnish dispersant, but it does not otherwise exclude or teach
away from using other dispersants designed for “other deposits” such as
soot.
We find no persuasive merit in the Appellants’ arguments that
(1) dispersants for soot particles are distinct from dispersants for sludge and
varnish and (2) soot is not a problem in biofuel-contaminated lubricating oil
compositions. These naked assertions are not supported by any objective
evidence (e.g., declaration evidence), and, therefore, are entitled to little, if
any, probative weight. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
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Application 13/076,586
Moreover, regarding the second argument, Boffa appears to teach
otherwise. Specifically, Boffa discloses that “partially combusted
decomposition products can contaminate the engine’s lubricants” (12).3
For these reasons, we uphold the Examiner’s rejections as to claim 1.
SUMMARY
Rejections I—III are affirmed. Therefore, the Examiner’s final
decision to reject claims 1—25 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
3 The term “soot” is known to refer to carbon particles resulting from
incomplete combustion of hydrocarbons. See, e.g.,
https: //en. wikipedia. org/ wiki/ S oot.
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