Appeal No. 96-2768
Application 08/118,377
showing is not commensurate in scope with appellant’s claim 1 because the compositions represented in
Examples 11-14 do not represent the wide variety of aminophenols encompassed by appellant’s claim.
For the foregoing reasons, we do not find that the data in Tables II and III establish unexpected results to
rebut the prima facie case.
Appellant argues that the examiner was in error in discounting the teachings of the Ramakumar
reference which appellant cited in her response to the examiner’s first action on the merits (see paper no.
6). According to appellant, the reference teaches “the unpredictability of formulation art in the area of
lubricant compositions as shown by conclusions that a zinc dithiophosphate-amino-type dispersant is
antagonistic to antiwear action” (brief: p. 10). The antagonistic effect disclosed by the reference is limited
to a showing of a single class of non-aromatic amino dispersants, namely, polyisobutylene succinimide-type
dispersants. We do not find that the reference contains a general teaching which would have led a person
having ordinary skill in the art to conclude that combinations of aminophenol-type dispersants and zinc
dithiophosphates are antagonistic to antiwear action.
For the foregoing reasons, we conclude that the examiner has made out a prima facie case of
obviousness over the teachings of Lange and Schroeck with regard to the rejection of claims 1, 2, 4 and
5 under 35 U.S.C. § 103. On consideration of all the evidence, the greater weight favors unpatentability.
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Piasecki, 745 F.2d
1468, 1471-73, 223 USPQ 785, 787-88 (Fed. Cir. 1984. Accordingly, the decision of the examiner
is affirmed.
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