Appeal No. 97-0455
Application No. 08/344,043
Claims 35 and 36
Claims 35 and 36 depend from claim 21 and add the limitations that the lubricant contains little (0
to 3%) or no bright stock, respectively. Applicant argues that these limitations further distinguish the
claimed method of lubricating a direct fuel injected, crankcase-scavenged two-stroke cycle engine since
the prior art does not teach such a limitation.
We have already found that the Davis ‘757 and '138 teach lubricants which contain no bright stock.
Davis ‘138 teaches that bright stock may be optionally included amounts of about 3% to about 20%. The
lower limit of about 3% meets the limitation of claim 35. As we indicated above Davis ‘757, Example B,
describes a lubricant which does not contain bright stock. Davis ‘138 also teaches that polymeric viscosity
improvers may be substituted for bright stocks to improve lubrication, lubricant film strength and engine
cleanliness. Davis ‘138, 17:45-48. Again, we read Davis ‘138 as suggesting the use of the disclosed
lubricants in direct fuel injected, crankcase-scavenged two-stroke cycle engine to the person of ordinary
skill in the art. Davis ‘138, 18:53-58. It would have been prima facie obvious to use low bright stock or
bright stock-free lubricants in the two-stroke cycle engines of the type specified in claims 35 and 36.
Secondary Considerations
Applicant argues that the declaration of Karl Eisenhauer (Eisenhauer declaration (Paper 6)) under
37 C.F.R. § 1.132 provides objective evidence of nonobviousness. Eisenhauer is said to be an employee
of Orbital Engine Company (Australia) Pty Ltd. and has been involved in the development of direct fuel
injected, crankcase scavenged, two-stroke cycle engines. Applicant asserts that the declaration shows (1)
unexpected results (unexpectedly improved performance), (2) commercial success, (3) a long felt but
unsolved need, and (4) failure by others. Appeal Brief (Paper 11) , p. 7-8. We must consider such
secondary evidence in evaluating obviousness under 35 U.S.C. § 103. In re Beattie, 974 F.2d 1309,
1313, 24 USPQ2d 1040, 1042-43 (Fed. Cir. 1992).
Unexpected results
An applicant bears the burden of proving unexpectedly good results. In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). When unexpected results are used as evidence of
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