Ex Parte Goldblatt et al

Patent Trial and Appeal Board

May 30, 2017

11912847 (P.T.A.B. May. 30, 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.
11/912,847 06/03/2008 Irwin L. Goldblatt 39834-00 2964
4249 7590
CAROL WILSON
BP AMERICA INC.
150 West Warrenville Road
MC 200-1W
Naperville, IL 60563
06/01/2017 EXAMINER
HINES, LATOSHAD
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
bppatentus@bp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRWIN L. GOLDBLATT, SHEAN-JER CHEN, and
RICHARD P. SAUER
Appeal 2016-004059
Application 11/912,847
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) the Examiner’s decision
finally rejecting claims 1, 4, 6, 7, 11, 16, 18, 19, 30, 34, 35, 106, 121—123,
125, and 126. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to Appellants’ Specification filed October 26,
2007 (“Spec.”), the Final Office Action mailed November 25, 2014 (“Final
Act.”), the Appeal Brief filed June 29, 2015 (“Br.”), and the Examiner’s
Answer mailed December 8, 2015 (“Ans.”).
2 Appellants identify the real party in interest as Castrol Limited. Br. 2.
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Application 11/912,847
The subject matter on appeal relates to multiple function graft
polymers (i.e., graft polymers exhibiting multiple performance attributes)
that have a polyolefin or polyester backbone grafted with monomers
associated with sludge and varnish control as well as monomers associated
with soot handling and viscosity control. Spec. 1,11. 7—12. Claim 1,
reproduced below, is illustrative of the claims on appeal.
1. A multiple function dispersant graft polymer containing at
least two different monomers, each directly grafted to a polymer
backbone having graftable sites, in which:
one monomer comprises an ethylenically unsaturated,
aliphatic or aromatic monomer having from 2 to about 50 carbon
atoms and containing at least one member selected from the
group consisting of nitrogen, oxygen, and combinations thereof;
and
another monomer comprises an acylating agent with
which at least one amine has been reacted;
wherein the multiple function dispersant graft polymer has
a Rapid ADT response of at least about 4.
Br. 31 (Claims appendix).
REJECTIONS ON APPEAL
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 4, 6, 7, 11, 16, 18, 30, 34, 35, 121—123, 125,
and 126 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Goldblatt et al.3
(US 6,187,721 Bl, issued February 13, 2001) (hereinafter “Goldblatt”);4 and
3 Goldblatt shares a common inventor, Irwin L. Goldblatt, and a common
assignee, Castrol Limited, with the present application.
4 Although included in the Examiner’s statement of rejection, claims 124,
127, and 128 are canceled. See Br. 37—38.
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Application 11/912,847
Rejection 2: Claims 19 and 106 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Goldblatt in view of Goldblatt et al.
(US 2004/0043909 Al, published March 4, 2004) (hereinafter
“Goldblatt ’909”).
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
evidence on this record and each of Appellants’ contentions, we are not
persuaded that Appellants identify reversible error in the Examiner’s
rejections. Thus, we affirm the Examiner’s rejections for the reasons
expressed in the Final Office Action, the Answer, and below.
Rejection 1
Appellants’ arguments for patentability are based on limitations
recited in independent claim 1. Br. 7—27. Although presented under a
separate heading, Appellants provide no additional argument as to
claims 125 and 126 separate from what is argued for claim 1. We select
claim 1 as representative of the rejected claims, and the remaining claims
subject to the first-stated rejection will stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
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Anticipation
The Examiner finds that Goldblatt discloses a highly functionalized
graft copolymer comprising at least one of the following monomers grafted
onto the polymer backbone: N-vinylimidazole, l-vinyl-2-pyrrolidinone; N-
vinyl imidazole; N-allyl imidazole; 1-vinyl pyrrolidone; 2-vinyl pyridine; 4-
vinyi pyridine; N-methyl-N-vinyl-acetamide; di-ailyl formamide; N-methyl-
N-allyl formamide; N-ethyl-N-allyl formamide; N-cyclohexyl-N-allyl
formamide; 4-methyl-5-vinyl thiazole; N-allyl di-iso-octyl phenothiazine; 2-
methyl-l-vinylimidazole; 3-methyl-1-vinylpyrazole; N-vinyi-purine; N-
vinyl piperazines; N-vinyl succinimide; Vinylpiperidines;
Vinylmorpholines; and combinations of those materials. Final Act. 4, citing
Goldblatt 3:61 —4:21; see also Goldblatt at 10:44— 11:6 (claim 1). The
Examiner finds that this disclosure meets the limitation of “one monomer
[comprising] an ethylenically unsaturated, aliphatic or aromatic monomer
having 2 to about 50 carbon atoms and at least one member selected from
the group consisting of nitrogen, oxygen, and combinations thereof,” as
recited in claim 1. Final Act. 4.
The Examiner finds that Goldblatt further discloses that the highly
functionalized graft copolymer preferably comprises at least 1.2% by weight
of suitable grafted monomers such as succinic anhydride or acid
functionality such as fumaric acid which, after functionalizing the polymer
backbone, is derivatized with morpholines, tetra pentamine, triethyl
tetramine or other suitable amines or nitrogen containing moieties. Final
Act. 5, citing Goldblatt 4:23—29; see also Goldblatt at 11:15—20 (claim 5).
The Examiner finds that this disclosure meets the limitation of “another
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monomer [comprising] an acylating agent with which at least one amine has
been reacted,” as recited in claim 1. Final Act. 5.
The Examiner finds that Goldblatt discloses that its graft polymer
reaction product preferably has a Rapid ADT value of at least 8, when
prepared using a solution grafting process. Final Act. 5, citing Goldblatt at
3:45-50.
The Examiner then concludes that claim 1 is anticipated because
“[Goldblatt] teaches a graft polymer comprising all of the claimed
components.” Final Act. 5.
Appellants argue that “Goldblatt [] describes two distinct
embodiments of functionalized graft copolymers,” but “does not disclose a
single embodiment in which both the recited first and second monomers of
claim 1 are grafted onto the same polymer backbone.” Br. 9—10 (emphasis
omitted).
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. Goldblatt discloses that its highly functionalized graft
copolymer preferably comprises at least 1.2% by weight of
N-vinylimidazole grafted onto the polymer backbone. Goldblatt 4:23—25;
see also Spec. 9,1. 6—7 (disclosing N-vinylimidazole (VIMA) as an example
of a ethylenically unsaturated aliphatic or aromatic monomer having from 2
to about 50 carbon atoms containing at least one member selected from the
group consisting of oxygen, nitrogen, and combinations thereof). Goldblatt
discloses that the graft copolymer preferably comprises at least 1.2% by
weight of suitable grafted monomers such as succinic anhydride or acid
functionality such as fumaric acid which, after functionalizing the polymer
backbone, is derivatized with morpholines, tetra pentamine, triethyl
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tetramine or other suitable amines or nitrogen containing moieties.
Goldblatt 4:26—32; see also Spec. 8,11. 14—15 (disclosing fumaric acid as a
suitable acylating agent), and Spec. 17,11. 3—6 (disclosing good performance
with respect to soot handling and sludge and varnish control are achieved by
grafting an acylating agent, such as maleic anhydride, onto the polymer
forming an acylated hydrocarbon, for example, a polymer containing
succinic anhydride (SA) groups), and Spec. 10,11. 8—10 (disclosing
triethylene tetramine and tetraethylene pentamine as examples of suitable
amines for reaction with the acyl group). Based on Goldblatt’s disclosure,
we are not persuaded that the Examiner reversibly erred in finding that one
of ordinary skill in the art could readily and immediately select the claimed
monomers from the very few particularly preferred monomers for grafting
on the polymer backbone thereby warranting a finding of anticipation.
The Examiner further finds that Goldblatt’s claims 1 and 5 disclose
monomers graftable to a polymer backbone—two different graft monomers
within the groups recited in claim 1. Ans. 12—13.
Appellants contend that there is error in the Examiner’s construction
of Goldblatt’s claim 5. Br. 12. Particularly, Appellants argue that because
claim 5 uses the term “said monomer” it relies on the reference to “a
monomer” in claim 1 for antecedent basis and thus “said monomer” in
claim 5 refers to the same monomer recited in claim 1. Br. 12. Accordingly,
Appellants contend that Goldblatt’s claim 5 discloses a polymer having just
one, not two, grafted monomers. Id.
We disagree with Appellants reading of claim 5. Claim 1 of Goldblatt
is directed to a method of dispersing soot produced by a lubricated diesel
engine, comprising lubricating the engine with a lubricating oil composition
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comprising, inter alia, from 0.1—2.5% by solids weight said functionalized
graft reaction product of a monomer selected from a group consisting of
various monomers, such as N-vinyl-imidazole, and N-vinyl succinimide, and
combinations thereof grafted onto an ethylenic polymer backbone. In
general, the indefinite article “a” or “an” in a patent claim carries the
meaning of “one or more” in open-ended claims containing the transitional
phrase “comprising.” KCJCorp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000) (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims containing the
transitional phrase ‘comprising.’”). Thus, “a monomer” in claim 1 means
“one or more monomers.” Claim 5, which depends from claim 1, recites
that said monomer is at least 1.2% by weight of suitable succinic anhydride
or fumaric acid which, after functionalizing the polymer backbone, is
derivatized with a material selected from the group consisting of
morpholines, tetra pentamine, triethyl tetramine, other amines, or other
nitrogen containing moieties. Goldblatt 10:44 — 11:6, 11:15—20. The use of
“said monomer” in claim 5 to refer back to “a monomer” in claim 1 does not
imply a singular monomer. Rather, because the initial indefinite article “a”
carries either a singular or plural meaning, any later reference to that same
claim element merely reflects the same potential plurality. Baldwin Graphic
Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“The
subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to
the same claim term does not change the general plural rule, but simply
reinvokes that non-singular meaning.”). Appellants do not direct us, nor do
we find, any disclosure in Goldblatt that evinces a clear intent to limit “a” to
“one.” See id. at 1342—1343. Thus, contrary to Appellants’ contentions, a
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preponderance of the evidence supports the Examiner’s finding that claim 5
recites a polymer that can include two different monomers that read on both
monomers recited in Appellants’ claim 1.
Appellants argue that the grafting sequence is important to generate a
multi-functional graft polymer, and because Goldblatt does not disclose first
grafting an acylating agent, such as maleic anhydride, onto the polymer
backbone, forming a polymer containing acyl groups, for example, succinic
anhydride groups, next introducing a monomer comprising an ethythenically
unsaturated, aliphatic or aromatic monomer, associated with sludge and
varnish handling, such as N-vinylimidazole, and then introducing and
reacting amines capable of undergoing a reaction with the acyl group
thereby imparting soot handling performance to the graft polymer,
Goldblatt’s graft polymer would not necessarily be a “multiple function”
graft polymer. Br. 13—14.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. According to Appellants’ Specification, a “multiple
function graft polymer” is broadly described as a graft polymer exhibiting
multiple performance attributes associated with the monomers grafted on the
polymer backbone. Spec. 1,11. 7—12. According to Appellants’
Specification, the graft sequence is determinant of performance quality
(Spec. 17,11. 2—3), but as Appellants’ acknowledge, “the multiple functions
of the graft polymer [(i.e., dispersancy associated with sludge and varnish
handling and soot handling performance)] are imparted by two groups of
monomers being grafted to the polymer backbone.” Br. 13; Spec. 2,1. 25—
31. Because Goldblatt discloses a graft polymer comprising the same
monomers as claimed in claim 1 directly grafted to the polymer backbone,
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we are not persuaded of reversible error in the Examiner’s determination that
Goldblatt’s graft polymer would necessarily exhibit multiple functions, e.g.,
dispersancy associated with sludge and varnish handling, imparted by the
“first monomer,” and soot handling performance imparted by “another
monomer.” “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (citations omitted). Appellants do not direct us to any evidence
that a graft polymer comprising both of the claimed monomers would not be
a “multiple function” graft polymer.
Appellants argue that the Examiner’s reading of Goldblatt as
disclosing the multiple function dispersant graft polymer of claim 1 appears
to improperly draw from the Examiner’s present knowledge, including
knowledge gleaned from Appellants’ Specification, rather than the
knowledge of one of ordinary skill in the art at the time of the invention.
Br. 15.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. The Examiner’s rejection relies on Goldblatt’s
disclosure, and how one of ordinary skill in the art would interpret
Goldblatt’s disclosure, not the Examiner’s present knowledge or knowledge
gleaned from Appellants’ Specification. Final Act. 4—8, citing Goldblatt
3:61—4:33; Ans. 14. As discussed above, a preponderance of the evidence
supports the Examiner’s finding that one of ordinary skill in the art would
interpret Goldblatt as disclosing a multiple function dispersant graft polymer
that includes at least two different monomers as recited in claim 1.
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Appellants argue Goldblatt does not anticipate claim 1 because its
disclosure would not have enabled a person of ordinary skill in the art to
make the multiple function polymer recited in claim 1, without undue
experimentation. Br. 18—23.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. A prior art patent is presumed to be enabled. In re
Antor Media Corp., 689 F.3d 1282, 1287—1288 (Fed. Cir. 2012). “As long
as an examiner makes a proper prima facie case of anticipation by giving
adequate notice under § 132, the burden shifts to the applicant to submit
rebuttal evidence of non-enablement.” Id. at 1289. The presumption of
enablement, however, is not rebutted by argument or evidence which “has
not shown that undue experimentation would be needed to practice the
claimed invention.” Id. at 1292. Appellants rely on a Declaration under
37 C.F.R. § 1.132 executed by Irwin F. Goldblatt on July 28, 2014
(hereinafter “Goldblatt Declaration”), as evidence that a person of ordinary
skill in the art would not have been able to prepare the claimed multiple
function graft polymer without the need for undue experimentation. Br. 20—
23. The Goldblatt Declaration, however, is inadequate to establish that those
with ordinary skill in this art would not have been able to form a graft
polymer containing one monomer comprising an ethylenically unsaturated
aliphatic or aromatic monomer having from 2 to about 50 carbon atoms and
containing at least member selected from the group consisting of nitrogen,
oxygen, and combinations thereof, and another monomer comprising an
acylating agent with which at least one amine has been reacted, without
undue experimentation. The Goldblatt Declaration admits that there are
known methods of grafting multiple monomers onto the same polymer
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backbone, such as simultaneous and sequential grafting processes. See
Goldblatt Declaration || 45, 47, 48. Although the Goldblatt Declaration
demonstrates that some experimentation is necessary to graft multiple
monomers onto the same polymer backbone using a sequential grafting
process (Goldblatt Declaration || 51—53, 55—56 and 59—60 (demonstrating
that one of three reaction products produced by a sequential grafting process
did not have both N-vinylimidazole (VIMA) monomers and maleic
anhydride (MAH) monomers each directly grafted to the polymer
backbone)), it fails to provide sufficient evidence that such experimentation
is “undue.” See In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (“That
some experimentation may be required is not fatal; the issue is whether the
amount of experimentation is ‘undue.’”).
Because Appellants’ arguments discussed above do not identify error
in the Examiner’s anticipation rejection of claim 1, we sustain the
anticipation rejection of claims 1, 4, 6, 7, 11, 16, 18, 30, 34, 35, 121—123,
125, and 126.
Obviousness
Alternatively, the Examiner contends that if Appellants argue that
Goldblatt does not anticipate the claimed invention because it does not
exemplify a specific graft copolymer meeting the limitations of the claims,
Goldblatt discloses two graft monomers selected from groups including
monomers within the groups recited in claim 1, and one of ordinary skill in
the art would have had a reasonable expectation of success in forming a graft
polymer containing two different monomers as recited in claim 1, directly
grafted to the polymer backbone. Final Act. 5—6.
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Appellants contend that the obviousness rejection is based on an
“obvious to try” rationale, and argue that “the Examiner has failed to show
that in this instance . . . the obvious to try standard is appropriate.” Br. 24.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection of claim 1. Despite Appellants’ assertion, the
Examiner’s alternative obviousness rejection does not rely on an “obvious to
try” rationale. On the contrary, the Examiner finds that Goldblatt teaches or
would suggest a multiple function dispersant graft polymer that includes at
least two different monomers as recited in claim 1. Final Act. 5—6; Ans. 30.
Appellants do not identify error in the Examiner’s finding.
In addition, Appellants argue that a person of ordinary skill in the art
at the time of the present invention would not have had a reasonable
expectation of success in forming the claimed multiple function graft
polymer from the teachings of Goldblatt, as evidenced by the Goldblatt
Declaration. Br. at 24—25.
We are not persuaded by Appellants’ argument of reversible error in
the Examiner’s rejection. The Goldblatt Declaration demonstrates that the
there is some degree of unpredictability in the art. Goldblatt Declaration
138, 44, 51, 53, and 55—60. Obviousness, however, cannot be avoided
simply by a showing of some degree of unpredictability in the art. “Only a
reasonable expectation of success, not absolute predictability, is necessary
for a conclusion of obviousness.” In reLongi, 759 F.2d 887, 897 (Fed.
Cir. 1985). On this record, Appellants have not provided sufficient
explanation or evidence to persuade us that there would have been no
reasonable expectation of success in forming a multiple function graft
polymer containing one monomer comprising an ethylenically unsaturated,
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aliphatic or aromatic monomer having from 2 to about 50 carbon atoms and
containing at least one member selected from the group consisting of
nitrogen, oxygen, and combinations thereof (e.g., N-vinylimidazole
(V1MA)) and another monomer comprising an acylating agent (e.g., succinic
anhydride) with which at least one amine has been reacted (e.g., triethylene
tetramine). See Goldblatt Declaration at 144 (admitting that “[tjhere are in
fact a number of ways that a person of ordinary skill might try to prepare a
graft polymer having two monomers grafted to the same backbone.”); see
also id. at || 55—56 and 59—60 (demonstrating that two reaction products
produced by two different sequential grafting processes had both N-
vinylimidazole (V1MA) monomers and maleic anhydride (MAH) monomers
each directly grafted to the polymer backbone.).
Finally, Appellants contend that they have presented evidence of
commercial success and unexpected results, and this evidence supports the
nonobviousness of the multiple function graft polymer of claim 1. Br. 27.
We have considered the evidence as a whole, but do not find it
persuasive. Goldblatt’s Declaration simply makes a bald assertion that,
“[t]he multiple function graft polymer of claim 1 has driven significant
business value across Castrol Lubricants product portfolio.” Goldblatt
Declaration | 63. The Declaration, however, does not provide any data
concerning sales and what percentage of the market Castrol Lubricants has
acquired. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (evidence
related solely to the number of units sold without providing any indication of
whether this represents a substantial quantity in the relevant market provides
a very weak showing of commercial success, if any). In addition, the
experimental evidence provided in the Goldblatt Declaration compares
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methods of making multiple function dispersant graft copolymers. The
claims, however, are directed to a multiple function dispersant graft
copolymer. Thus, the evidence provided in the Goldblatt Declaration is not
commensurate in scope with the claimed invention. Moreover, it is not clear
whether the results obtained would be unexpected.
For the above reasons, Appellants have not persuaded us of reversible
error in the Examiner’s obviousness rejection. Accordingly, we sustain the
obviousness rejection of claims 1, 4, 6, 7, 11, 16, 18, 30, 34, 35, 121—123,
125, and 126.
Rejection 2
Appellants rely on the arguments presented regarding claim 1, and
essentially argue that Goldblatt ’909 fails to cure the alleged deficiencies in
the rejection of claim 1. See Br. 28. This argument is not persuasive of
error in the Examiner’s rejections because, for the reasons discussed above,
we are not persuaded of any deficiencies in the Examiner’s rejection of
claim 1.
DECISION
For the above reasons, the Examiner’s rejections of claims 1, 4, 6, 7,
11, 16, 18, 19, 30, 34, 35, 106, 121-123, 125, and 126 are 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).
AFFIRMED
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