Appeal No. 97-0455
Application No. 08/344,043
Group I: claims 1-20
Group II: claim 41
Group III: claims 21-34 and 37-40
Group IV: claims 35 and 36
Pursuant to 37 CFR §1.192(c)(7) we shall decide this appeal on the basis of claims 1, 21, 35, 36 and 41.
Claims 1-20
Claim 1 requires the combination of (A) an oil of lubricating viscosity, (B) a mixture of either an
aminophenol or the reaction product of a nitrophenol and an amino compound with a Mannich, amine,
nitrogen containing carboxylic or ester dispersant, (C) an additive selected from a nitrogen containing,
hindered phenol or a sulfur containing antioxidant. The lubricant may optionally include up to 3% bright
stocks and must be substantially free of ash forming and phosphorous containing components.
Applicant directs our attention to two limitations of claim 1 which are allegedly not taught by the
Davis references. Appeal Brief (Paper 11), p. 3. See 37 CFR § 1.192(c)(8)(iv)(requiring the appeal
brief to identify the specific limitations not taught by the references.)
First, applicant argues that the Davis references do not teach or suggest lubricants containing little
or no bright stock. Claim 1, however, permits up to “about 3%” bright stock. We further note Davis '138
teaches that bright stock may be present in "about 3 to about 20% of the total oil composition." Davis
‘138, 18:23-28. The lower limit of about 3% bright stock taught by Davis ‘138 overlaps applicant’s upper
limit of 3%. In view of this teaching the hypothetical person of ordinary skill in the art would recognize that
about 3% bright stock could be used in the lubricants taught by Davis ‘138. Accordingly, where bright
stock is present, the use of 3% would have been prima facie obvious.
We further note that the Davis patents teach that bright stocks are an optional ingredient and may
be replaced by other viscosity improvers. Thus, Davis ‘138 teaches:
Lubricity agents such as synthetic polymers (e.g., polyisobutene having a
number average molecular weight in the range of about 750 to about 15,000), as
measured by vapor phase osmometry or gel permeation chromatography, polyol
ether (e.g., poly(oxyethylene-oxypropylene)ethers) and ester oils (e.g., the ester
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