Infineum International Limited

Patent Trials and Appeals Board

May 22, 2020

15197813 - (D) (P.T.A.B. May. 22, 2020)

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.
15/197,813 06/30/2016 Luciana G. Angonesi PF2015M004 8374
25553 7590 05/22/2020
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
CAMPANELL, FRANCIS C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
05/22/2020 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 LUCIANA G. ANGONESI, PETER D. WATTS, and
ROBERT C. HOUGH

Appeal 2019-005420
Application 15/197,813
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. We have jurisdiction under
35 U.S.C. § 6(b). Oral argument was heard in this appeal on May 18, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Infineum
International Limited. (Appeal Br. 1.)
Appeal 2019-005420
Application 15/197,813

2
Appellant’s invention is directed to a lubricant additive package for
two-stroke and four-stroke marine diesel internal combustion engines (Spec.
1:4–6; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. An additive package for a two-stroke or four-stroke
marine engine lubricating oil composition, comprising an oil of
lubricating viscosity in a minor amount; a major amount of (A)
an overbased metal hydroxybenzoate detergent additive and (B)
an overbased metal sulfonate detergent additive; and (C) a
metal-free, oil-soluble hydrocarbylphenol-aldehyde condensate
additive in an amount in the range of 1 to 10 mass%; wherein
the ratio of (A) to (B), expressed as mmol of soap, is in the
range of 90:10 to 10:90.

Appellant appeals the following rejection:
Claims 1–10 are rejected under 35 U.S.C. § 103 as unpatentable over
Cook (US 2014/0228265 A1; publ. Aug. 14, 2014).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the rejection of
claim 1 over Cook is located on page 3 of the Final Action.
Appellant argues that Cook’s metal-free, oil-soluble
hydrocarbylphenol aldehyde condensates are only described as precursors
from which over-based metal phenate detergents may be formed (Appeal Br.
4). Appellant argues that paragraph 34 of Cook discloses that “[t]he amount
of the bridged phenolic compound, when it is present as an overbased
detergent, may vary depending on the end use application.” (Appeal Br. 4.)
Appellant contends that Cook’s paragraph 34 teaching shows that the
bridged phenolic compound is a precursor to making the overbased
Appeal 2019-005420
Application 15/197,813

3
detergent (Appeal Br. 4). Appellant contends that there is nothing in Cook
that teaches to put the metal-free bridged phenolic compound into a
lubricating oil composition (Appeal Br. 4).
Appellant’s arguments are not persuasive because they focus on only
Cook’s embodiment where the bridged phenolic compound is in salt form.
The Examiner correctly finds that Cook teaches that the salt form of the
bridged phenolic compound is optional in that it is only one form of the
disclosed invention (Ans. 5). Cook discloses that the bridged phenolic
compound may be in an oligomer form or a salt form (¶¶ 26, 30, claims 1, 8,
15). Appellant does not respond to or otherwise show reversible error with
the Examiner’s finding that Cook’s disclosure is not limited to a salt form.
Indeed, Cook’s paragraph 34 disclosure argued by Appellant states that
“[t]he amount of the bridged phenolic compound, when it is present as an
overbased detergent, may vary depending on the end-use application.”
(¶ 34 (emphasis added)). Cook’s reference to an overbased detergent are
described in paragraphs 31–33 in the context of the metal salt embodiment
of Cook. Appellant has not shown that Cook’s paragraph 34 disclosure
relates to the oligomer form of the bridged phenolic compound. Rather,
Cook’s claim 15 recites that the oligomeric phenolic compound is combined
with an oil of lubricating viscosity.
On this record, we affirm the Examiner’s § 103 rejection of claims 1–
10 over Cook.

Appeal 2019-005420
Application 15/197,813

4
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10 103 Cook 1–10

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