Appeal No. 1997-0494
Application 08/275,860
would have disclosed lubricating oil compositions wherein the phenate provides at least 90% of the
total base equivalents donated by the phenate and the sulfonate to one of ordinary skill in this art.
We agree with the examiner (see supra note 2) that, prima facie, Vernet teaches lubricating oil
compositions wherein the phenate provides at least 90% of the total base equivalents donated by the
phenate and the sulfonate. Indeed, we observe that the phenate would provide about 93% of the total
base equivalents in a blend of 50 wt % of a phenate having a TBN of 400 and 50 wt % of a sulfonate
having a TBN of 30 prepared following the teachings of the reference. Further selection within the
teachings of the reference of increasing amounts of phenate with decreasing TBN values and conversely
for the sulfonate ingredient to where, as appellants submit (brief, pages 4-5), a phenate and sulfonate of
equivalent TBN are employed at 90 wt % of the phenate, would also result in blends wherein the
phenate would provide at least 90% of the total base equivalents as specified in appealed claim 1.
Thus, we find that prima facie, one of ordinary skill in this art would have reasonably arrived at the
claimed lubricating oil compositions encompassed by claim 1 by routinely following the teachings of
Vernet. See Merck & Co. v. Biocraft Labs, Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46
(Fed. Cir. 1989); In re Boesch, 617 F.2d 272, 275-76, 205 USPQ 215, 218-19 (CCPA 1980); In re
Lemin, 332 F.2d 839, 141 USPQ 814 (CCPA 1964).
Accordingly, since a prima facie case of obviousness has been established over Vernet by the
examiner, we have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole including the evidence in appellants’ specification, giving due consideration to the
weight of appellants’ arguments. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ
1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
We have carefully considered all of appellants’ arguments and the evidence presented in the
specification. While we find that the formulae presented by appellants (brief, page 4) useful in
considering the teaching of Vernet, we cannot agree with the position advanced by appellants (id., page
5) because the TBN taught for the phenate and sulfonate in the reference was not taken into account.
Indeed, as we demonstrated above, and contrary to appellants’ contentions, one of ordinary skill in this
art routinely following the teachings of the reference would have arrived at blends of phenate and
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