Appeal No. 98-0192 6
Application No. 08/572,281
of matter contains a
t-butyl group in the ortho position as required by claim 53, Group (B).
As to the carbonyl carboxylic acid components required to form the metal salt, we
find that carbonyl carboxylic components disclosed by Blystone, column 15, lines 48-51
overlap those disclosed in the specification page 24, lines 18-25. In addition, we find
that the process for the preparation of the metal salt is substantially identical to that
disclosed in the specification. See Blystone, column 15, lines 48-63. Compare the
disclosure therein with the specification, page 27, lines 1-6.
Appellants have repeatedly argued that the requirement of the claimed subject
matter that the additives are soluble in the lubricating oil is not disclosed by Blystone.
See Brief, pages 5 and 8. In accordance with our finding, supra, we determined that the
metal salt prepared by Blystone was substantially the same as that of the claimed subject
matter and each is being mixed with an oil of lubricating viscosity. It is well settled that
when appellants’ product and that of the prior art appears to be identical or substantially
identical, the burden shifts to appellants to provide evidence that the prior art product
does not necessarily or inherently possess the relied-upon characteristics of appellants’
claimed product. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
On the record before us, no evidence is present directed to differences in additive
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