Appeal No. 1997-4226
Application 08/501,152
application, under 35 U.S.C. § 103(a) as being unpatentable over Schnur et al. (Schnur).4 For the
reasons pointed out by appellants in the brief and reply brief, the examiner has failed to make out a
prima facie case of obviousness, to which we add the following for emphasis.
It is well settled that the examiner has the burden of establishing a prima facie case of
obviousness by showing that some objective teaching, suggestion or motivation in the applied prior art
taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, Pro-Mold and Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
The appealed claims, as represented by appealed claim 1, are drawn to a flame retardant
hydraulic oil containing a hydraulic base oil comprising a polyol partial ester, wherein the polyol partial
ester has certain limitations. Among these limitations is the carbon and hydroxyl moiety content of the
polyol and the carbon content of the acyclic monocarboxylic acid(s) reacted to form the partial ester,
and the hydroxyl value, flash point and number average molecular weight of the partial ester product.
Thus, at the very least, the partial ester is prepared from a polyol having at least three hydroxy groups
and a carboxylic acid falling within the carbon ranges has a hydroxy value of at least 35 mg KOH/g, a
flash point of at least 290°C (554°F), and a number average molecular weight of at least 600. The
examiner relies on the teaching in Schnur that “in addition to simple ester and diester products,” there
may be used as an additive in synthetic hydrocarbon base oil containing hydraulic fluid, “polyol esters”
prepared from “such as neopentyl glycol or trimethylolpropane” and an “aliphatic monocarboxylic acid
having about 5 to 10 carbon atoms” (col. 4, lines 36-43). We note that neopentyl glycol has two
hydroxyl groups and five carbon atoms while trimethylolpropane has three hydroxy groups. The
examiner takes the position that while Schnur “does not exactly exemplify the instantly claimed
4 Answer, pages 3-4 and 5-6. The examiner withdrew the ground of rejection based on the judicially
created doctrine of obviousness-type double patenting (answer, page 2).
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