Application of Herz

• Decision Date: 22 July 1976
• Docket Number: Patent Appeal No. 76-574.
• Parties: Application of Jack L. HERZ and Rodney Howard Willis.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

537 F.2d 549

Application of Jack L. HERZ and

Rodney Howard Willis.

Patent Appeal No. 76-574.

United States Court of Customs and Patent Appeals.

July 22, 1976.

Charles B. Rodman, Dobbs Ferry, N. Y., attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Jack E. Armore, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

MILLER, Judge.

This appeal is from the decision of the Patent and Trademark Office Board of Appeals affirming the rejection of claims 2-7 and 9 in application serial No. 180, 925, filed September 15, 1971, for "Oxidation Inhibited Phosphate Based Hydraulic Fluids." We affirm.

The Invention

The invention consists of functional fluids essentially of a phosphate base stock and an antioxidant of (1) a hydrogen phosphate ester, or amine salt thereof, and (2) an alkylene-linked hindered bisphenol. Appellants' specification states that their fluids can additionally contain any of the well-known additives, including, inter alia, ashless dispersants of the alkoxylated alkyl phenol type and viscosity index improvers such as polymers and copolymers of alkyl esters of acrylic and methacrylic acid having a molecular weight of from about 5,000 to about 50,000. The specification further states that the fluids possess "superior oxidative stability" compared to fluids that differ only in the absence of a hydrogen phosphate ester or amine salt thereof and that this is unexpected since hydrogen phosphates were not previously recognized as antioxidants. The fluids can be used in a wide variety of applications, such as in hydraulic lifts and levelling devices and as steam turbine lubricants. Claim 9, the only independent claim, is illustrative:

The Rejections

The board, one member dissenting, affirmed rejections under 35 U.S.C. § 103 and § 112, first paragraph. Since we affirm the section 103 rejection, we do not reach the rejection under section 112.

The patents relied upon by the board majority are:

                  Orloff et al.    (Orloff)    3,115,465    Dec. 24, 1963
                  Messina et al.   (Messina)   3,556,999    Jan. 19, 1971
                

Orloff discloses functional fluids that can have a wide variety of base stocks, including hydrocarbon oil and phosphate base stocks, and an antioxidant made up of a phosphite ester,¹ preferably a hydrogen phosphite ester, and a methylene-linked hindered bisphenol (which is an alkylene-linked hindered bisphenol). The antioxidant is stated to be highly effective in inhibiting oxidative deterioration of hydrocarbon fuels, oils, greases, and polymeric and other organic compositions. Functional fluids and automatic transmission fluids are disclosed that are based on hydrocarbon oil, to which may be added, in addition to the antioxidant, components that improve the properties of the fluids, including viscosity index improvers. Also disclosed are hydraulic fluids and lubricants based on organic phosphates, which may contain, besides the antioxidant, the additives frequently used to fortify lubricant compositions, such as detergent-dispersants and viscosity index improvers. Orloff further discloses that the structure of the phenolic compound is of great importance, because, if other phenolic compounds are substituted, the results are decidedly inferior.

Messina discloses hydraulic fluids, particularly automatic transmission fluids, based on hydrocarbon oil and containing an additive made up of (1) a phosphite (which may be a hydrogen phosphite ester) or a hydrogen phosphate ester; (2) a substituted phenol of a certain structure, an alkylene-linked hindered bisphenol, or an aromatic secondary amine; and (3) an oil-soluble dispersant copolymer (having a molecular weight of from 2,000 to 1,000,000 or more) of an N-vinylpyrrolidinone and at least one alkyl acrylate or methacrylate. Known additives may be employed to bring about special effects. The fluids are said to possess superior stability against oxidative deterioration and enhanced detergent-dispersant qualities. Messina states that each of the three additive components is "critically important" and —

furthermore, if one employs the fluid base oil alone or with any of the three above components separately, oxidation resistance is inferior and unsatisfactory.

He adds:

Furthermore, any combination of two, but not all three of the three above-described components also gives inferior results.

The examiner held the invention unpatentable over Orloff in view of Messina and vice versa. The board affirmed, reasoning that Messina teaches that phosphite esters and di-substituted phosphate esters are equivalent when combined with a substituted phenol and other materials to form an antioxidant and that, therefore, it would have been obvious to substitute a phosphate ester for the phosphite ester in Orloff. Regarding the N-vinylpyrrolidinone of Messina, the board noted that Messina teaches "an embodiment employing only two components to obtain inferior (but apparently useful) oxidation resistance" and said that it had no reason to assume that vinylpyrrolidinone would not also improve appellants'...