Appeal No. 97-0455
Application No. 08/344,043
formulations use calcium, barium or magnesium sulfonates either singly, in
combination with one another, or in combination with ashless dispersants.
Davis ‘138, 17:34-42. Bright stocks may be present in certain embodiments but are not required. Davis
‘138, 18:23-28. Bright stocks, when present, are taught to be present in two-cycle oil in amounts of about
3 to about 20%. Davis ‘138, 18:23-28. Polymeric viscosity improvers are specifically disclosed as
replacements for bright stocks to improve lubrication, lubricant film strength and engine cleanliness. Davis
‘138, 17:45-48.
Smalheer
Smalheer presents a discussion of additives conventionally used in oil based lubricants. The
publication specifically teaches amine, nitrogen-containing, carboxylic ester ashless dispersants (Smalheer,
p. 5) and nitrogen-containing, hindered-phenol and sulfur-containing antioxidants including phenolic amines
(Smalheer, p. 7).
The rejections
The examiner held that the claimed invention differed from the lubricants described in the Davis
patents in two respects: (1) the specific ashless dispersant claimed and (2) the use of a nitrogen containing
hindered phenol or a sulfur-containing antioxidant. The examiner found that Smalheer teaches that ashless
dispersants and antioxidants specified in the claims were conventional lubricant additives. Based upon the
combined disclosures of the references, the examiner concluded that it would have been obvious to use
these conventional additives in the lubricant compositions disclosed in the Davis patents.
Applicant asserts that the examiner has not made out a prima facie case and that any prima facie
case is overcome by the Eisenhauer declaration submitted under 37 CFR § 1.132.
We affirm the examiner’s rejection.
DISCUSSION
Grouping of the claims
Applicant requests independent consideration of four groups of claims. Appeal Brief (Paper 11),
p. 3:
-7-
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