Ex Parte Dam et al - Page 4

                Appeal 2007-4193                                                                               
                Application 10/367,432                                                                         

                      Appellants raise two issues.  Appellants first contend there is no                       
                motivation to combine the references because Willis’ Examples teach away                       
                from adding Stuart’s corrosion inhibitor to a lubricating oil composition                      
                containing Willis’ additives (Br. 8).  In this respect, Appellants rely on                     
                Willis Example V, showing the results of evaluating lubricating oil                            
                formulations for bearing weight loss, contending “runs 7 and 10, which                         
                contained a borated succinimide and a carbonated succinimide,” and are                         
                based on Willis’ compositions, “had smaller amounts of bearing loss when                       
                compared to runs 11 and 12, which contained only a carbonated                                  
                succinimide” (Br. 10, citing Willis, col. 11, ll. 42-45).  Appellants contend                  
                the bearing weight loss exhibited by Willis’ illustrative examples “fall below                 
                the . . . maximum weight loss standard,” and thus, “one of ordinary skill in                   
                the art would not have been motivated to add a corrosion inhibitor to”                         
                Willis’ lubricating oil formulations (Br. 10).                                                 
                      Appellants next contend Stuart’s Example A illustrates a corrosion                       
                inhibitor “synthesized with 1000 molecular weight polyisobutylene” and the                     
                reference “does not teach or suggest a corrosion inhibitor derived from a                      
                polyisobutylene having a molecular weight of between 1100 and 1500,”                           
                such that the combination of Willis and Stuart would not result in the                         
                claimed compositions (Br. 11).  Appellants rely on a comparison in the                         
                Specification of a lubricating oil composition containing 0.40 wt% of                          
                corrosion inhibit 3, prepared with 1300 molecular weight polyisobutylene as                    
                claimed, set forth in Table 4, with a lubricating oil composition containing                   
                0.40 wt% of corrosion inhibitor 2, prepared with 1000 molecular weight                         
                polyisobutylene as taught in Stuart, set forth in Table 4 (Br. 12;                             


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