Ex Parte Dam et al - Page 3

                Appeal 2007-4193                                                                               
                Application 10/367,432                                                                         

                      There is no dispute, and indeed, Appellants acknowledge, that Willis                     
                would have disclosed to one of ordinary skill in the art a composition of                      
                ethylene carbonate-treated succinimides and borated succinimides, and that                     
                Stuart would have disclosed to this person dispersed aromatic dicarboxylic                     
                acid corrosion inhibitors prepared from succinimides salts and terephthalic                    
                acid as claimed (Answer 3-5; Specification, e.g., 3:33, 6:8, and 7:10).  With                  
                respect to the claim limitation “polyisobutenyl succinic anhydride, having a                   
                polyisobutenyl group with a number average molecular weight of about                           
                1100-1500,” the Examiner finds “Stuart teaches that the R substituent on the                   
                alkenyl succinic anhydride reactant is a hydrocarbon radical having . . .                      
                preferably from about 50 to about 200 carbon atoms . . . [that] corresponds                    
                to a molecular weight . . . preferably from about 800-3200,” which                             
                encompasses the “claimed range for the number average molecular weight                         
                for the polyisobutenyl group of 1100-1500” (Answer 6-7, citing Stuart,                         
                col. 2, ll. 1-12).  The Examiner finds Stuart’s disclosure is not limited to the               
                illustrative examples therein, including “a molecular weight of 1000 for the                   
                polyisobutenyl substituent,” but would have fairly taught the range of 800 to                  
                3200 to one of ordinary skill in the art (id. 7).  The Examiner concludes that                 
                it would have obvious to one of ordinary skill in this art to combine the                      
                additives of Willis and that of Stuart to form a composition for lubricating                   
                oils because Willis discloses that lubricating oils for the crankcase of an                    
                internal combustion engine can contain additional additives to those                           
                disclosed therein and Stuart discloses the dispersed corrosion inhibitors can                  
                be used with various lubricant base oils (Answer 4-5, citing Willis, col. 5,                   
                l. 65 to col. 7, l. 7 and Stuart, col. 4, ll. 8-32).                                           


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