Appeal No. 1997-0042
Application No. 07/992,177
ether, corresponding to Sample 10 of the Namiki Declaration).
The examiner states that the Namiki Declaration does not
compare the effect that the ethylene oxide group being next to
the hydrogen terminal has on the physical properties of the
lubricant (Answer, pages 5-6). However, as discussed above,
the examiner has not established that this claimed limitation
is suggested by the applied prior art.
The examiner has also stated that the Tatsumi Declaration
is not commensurate in scope with the claimed subject matter
(Answer, page 5). However, the examiner has not addressed the
sufficiency of the combined showing of representative examples
presented in both the Tatsumi and Namiki Declarations.
We determine, based on the totality of the record,
considering the arguments and evidence presented by appellants
and the examiner, that the preponderance of evidence weighs in
favor of unobviousness of the claimed subject matter. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Merchant, 575 F.2d 865, 868, 197 USPQ 785,
787 (CCPA 1978). Accordingly, the rejection of the claims on
appeal under 35 U.S.C. § 103 is reversed.
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