Appeal No. 96-2888
Application No. 08/222,495
including zinc dialkyldithiophosphates generically and secondary
zinc dialkyldithiophosphates specifically in combination with
thiocarbamates as properly indicated by the examiner in her
Answer. Thus, contrary to the appellants’ belief, it would have
been obvious for one with ordinary skill in the art to combine
these ingredients including a secondary zinc dialkyldi-
thiophosphate in combination with a thiocarbamate in order to
obtain an effective lubricating oil composition for an internal
combustion engine based upon a reasonable expectation of success.
In re O’Farrell, 853 F.2d 894, 903-904, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988). That the applied references such as the Holubec
patent disclose a multitude of effective combinations does not
render any particular formulation, such as the aforementioned
composition, less obvious. Merck & Co. v. Biocraft Labs., 874
F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989).
Analogous reasoning applies to the argued claim feature
concerning phosphorous content. Concerning this matter, we note
that the appellants have acknowledged in the BACKGROUND OF THE
INVENTION section of the subject specification that a low
phosphorous content was known in the prior art to be desirable.
This desirability would have motivated one with ordinary skill in
the art to limit phosphorous content by limiting the number of
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