Appeal No. 97-0455
Application No. 08/344,043
to solve that problem. In re Mixon, 470 F.2d 1374, 1377, 176 USPQ 296, 299 (CCPA 1973); In re
Allen, 324 F.2d 993, 997, 139 USPQ 492, 495 (CCPA 1963). The Eisenhauer declaration does not
establish the existence of a problem which persisted in the art for a long period without solution. Applicant
argues that “neither Orbital nor four other major lubricant and additive suppliers have been able to supply
a formulation that is satisfactory in simultaneously minimizing exhaust valve fouling and providing acceptable
overall engine lubrication.” Appeal Brief (Paper 11), p. 8. The Eisenhauer declaration does not indicate
that Orbital tried to solve the problems. The declaration indicates only that it worked with Lubrizol to do
so. Nor does the declaration indicate that the “four other major lubricant and additive suppliers” had
attempted to address the specific problems. It indicates only that “candidate lubricants” were examined
and does not state that the candidate lubricants were attempts by the suppliers to address the specific
problems.
In any event, it appears that the lubricants disclosed by the Davis patents, particularly the ashless
lubricants, provide a solution to the problem. Eisenhauer identifies three problems associated with fuel
injected, crankcase scavenged, two-stroke cycle engines: (1) fouling of the exhaust valves; (2) plugging of
catalytic converters; and (3) decomposition of the lubricant. Davis specifically recommends ashless
lubricants in two-stroke cycle engines to avoid deposits. Davis ‘138, 17:34-42.
Lastly, the declaration does not indicate that those allegedly attempting to solve the problem were
aware of the most relevant prior art, the Davis patents. In re Sneed, 710 F.2d 1544, 1549, 218 USPQ
385, 389 (Fed. Cir. 1983).
The Eisenhauer declaration provides insufficient evidence that a long felt but unsolved need existed
in the art that was solved by applicants claimed lubricants.
DECISION
We affirm the examiner's rejection of claims 1-41 under 35 U.S.C. § 103.
No time for taking any subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
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