Appeal No. 94-3973
Application 08/029,754
relationship to the amount of hydrocarbon oil in the oil-based drilling muds as taught by Lundberg and
Thaler, with the reasonable expectation of successfully obtaining a composition which could be used in
oil-based drilling. Compare In re Castner, 518 F.2d 1234, 1238-39, 186 USPQ 213, 217 (CCPA
1975) (A[W]hen the ingredients are associated in an obvious manner set forth in the claims, they do not
co-act with each other in any new or unexpected way and define nothing patentable over the prior
art.@).
With respect to appellants= arguments presented in their brief (pages 3-4), we recognize that the
polar cosolvent taught to be optional by Lundberg and Thaler is not specified in appealed claim 1.
However, we conclude that appealed claim 1 would read on drilling mud additive concentrate
compositions that contain polar solvents as permitted by the use of the phrase Aconsisting essentially of@
as we find no basis in the specification for excluding ingredients from the claimed compositions that do
not materially affect the basic and novel characteristics of the claimed compositions. See In re Herz,
537 F.2d 549, 551-552, 190 USPQ 461, 463 (CCPA 1976); Ex parte Boukidis, 154 USPQ 444
(Bd. App. 1966). We are of the view that the one of ordinary skill in the art would have recognized the
expediency of using a polar cosolvent in connection with sulfonated polymer and hydrocarbon oils for
oil-based drilling muds as seen from Lundberg and Thaler and we note that the specification teaches that
the compositions can contain polar additives in connection with the neutralization of the sulfonated
polymer (pages 6-7).
Accordingly, based on our consideration of the totality of the record before us, we have weighed
the evidence of obviousness found in the combination of Lundberg and Thaler with respect to appealed
claims 1 through 3 and in the combination thereof with Duke and Jachnik with respect to appealed claim 4
with appellants= countervailing evidence of and argument for nonobviousness and conclude that by a
preponderance of the evidence the claimed invention as a whole encompassed by claims 1 through 4 on
appeal would have been obvious as a matter of law under 35 U.S.C. ' 103.
Accordingly, we have affirmed the rejection of appealed claims 1 through 3 over Lundberg or
Thaler and the rejection of appealed claim 4 over Lundberg or Thaler further in view of Duke and
Jachnik, but we have reversed the rejection of appealed claims 8 and 9 over Lundberg and Thaler.
The examiner=s decision is affirmed-in-part.
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