11300982 (B.P.A.I. Jul. 12, 2012)

Ex Parte Wu et al

Board of Patent Appeals and InterferencesJul 12, 2012

11300982 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte MARGARET MAY-SOM WU, JON EDMOND RANDOLPH STANAT, KYLE D. LAWRENCE, RICHARD T. SPISSELL, JAMES WILLIAM GLEESON, JAMES THOMAS CAREY, and CHARLES LAMBERT BAKER ________________ Appeal 2010-009012 Application 11/300,982 Technology Center 1700 ________________ Before CHUNG K. PAK, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009012 Application 11/300,982 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 through 17, all of the claims pending in the above- identified application. 1 We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE The subject matter on appeal is directed to “lubricant fluid blends based on hydroprocessed oils and copolymers made from ethylene with one or more alpha-olefins” (Spec. 1, para. 0002). Details of the appealed subject matter are recited in representative appealed claims 1 and 7 reproduced below from the Claims Appendix to the Appeal Brief: 1. A lubricating oil base stock consisting of: (a) a copolymer of ethylene with one or more alpha olefins, containing not more than 50 wt% ethylene, the copolymer having a number molecular weight from 400 to 10,000 and having a molecular weight distribution < 3; and (b) a hydroprocessed oil having a VI greater than 80, characterized in that the base stock has a VI which is higher than that of the hydroprocessed oil component alone. 7. A lubricant base stock consisting of a blend of: (a) from 1 to 95 wt%, based on the blend, of an ethylene alpha olefin copolymer of ethylene with one or more alpha olefins containing not more than 50 wt% ethylene, the copolymer having a number average molecular weight from 400 to 10,000 and having a molecular weight distribution < 3; and 1 Appeal Brief (“App. Br.”) filed on October 1, 2009, 11; Correction to Appeal Brief (“Supplemental Br.”) filed December 15, 2009, 4-5 (correcting pages 11 and 12 of the Appeal Brief); and Examiner’s Answer (“Ans.”) filed March 16, 2010, 2. Appeal 2010-009012 Application 11/300,982 3 (b) from 5 to 99 wt%, based on the blend, of a hydroprocessed oil having a VI greater than 80 and selected from Group II and Group III oils and Fischer-Tropsch wax isomerates characterized in that the base stock blend has a VI which is higher than that of the hydroprocessed oil component alone. As evidence of unpatentability of the subject matter appealed, the Examiner relies upon the following evidence (Ans. 2): Ichihashi ‘967 US 4,776,967 Oct. 11, 1988 Kinoshita EP 0 276 320 A1 Aug. 3, 1988 Ichihashi ‘006 EP 0 291 006 A2 Nov. 17, 1988 Appellants seek review of the Examiner’s rejection of claims 1 through 17 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of either Ichihashi ‘967 or ‘006 and Kinoshita. (Supplemental Br. 4 correcting page 11 of the Appeal Brief.) DISCUSSION Although we do not disagree with the Examiner’s statement at page 8 of the Answer that “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” it is well settled that such a prima facie case of obviousness can be rebutted if Appellants can “show that the [claimed] particular range is critical, generally by showing that the claimed [particular] range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (citing In re Margolis, 785 F.2d 1029, 1031 (Fed. Cir. 1986)) (All evidence of nonobviousness, including data in the specification, must be considered when assessing patentability.) Here, as recognized by the App App Exam 2 thr claim unex App regar Spec not q resul refer obvi not a Sulli addr 54 (C App Exam unpa and K REV eal 2010-0 lication 11 iner at pa ough 6 at ed ethyle pected res ellants hav ding the d ification. uestioned ts. (See A Thus, re ences relie ousness, th ddress the van, 498 F ess submit CPA 197 ellant is er Accordin iner’s rej tentable o inoshita. In view ERSED. 09012 /300,982 ges 7 and pages 12 th ne content ults. To d e also pro ata in Tab (See also the adequ ns. 7 and gardless of d upon by e Examin unexpecte .3d 1345, ted eviden 6) (Failure ror.) gly, on th ection of c ver the com of the fore 8 of the A rough 19 of the eth emonstrat ffered exte les 2 throu App. Br. 1 acy of suc 8.) the suffic the Exam er’s § 103 d results r 1353 (Fed ce is error to consid is record, laims 1 th bined dis O going, the 4 nswer, Ap of the Spe ylene alph e the suffic nsive expl gh 6 at pa 5-19.) Ne h data in te iency of th iner in est rejection f elied upon . Cir. 2007 .); In re R er the rebu we are con rough 17 u closures o RDER decision o pellants re cification a olefin co iency of u anations i ges 12 thr vertheless rms of sh e teaching ablishing a ails since by Appel ) (Failure inehart, 5 ttable evid strained to nder 35 U f either Ich f the Exam ly on data to show th polymer i nexpected n the Appe ough 19 of , the Exam owing une s of the p prima fac the Exami lants. See to meanin 31 F.2d 10 ence relie reverse t .S.C. § 10 ihashi ‘96 iner is in Tables at the mparts results, al Brief the iner has xpected rior art ie case of ner does In re gfully 48, 1053- d upon by he 3(a) as 7 or ‘006 Appeal 2010-009012 Application 11/300,982 5 REVERSED ssl