Appeal No. 1997-0494
Application 08/275,860
sulfonate where the phenate provides at least 90% of the total base equivalents other than the blends
where the phenate and the sulfonate have the same TBN and the phenate is present in the amount of 90
wt %.
We cannot agree with appellants that, on this record, the evidence provided by a comparison of
the lubricating oil compositions of invention Examples 2 and 3 with Comparative Examples 4 through 7
demonstrate “an unexpected significant reduction in the average viscosity increase due to soot loading”
(brief, pages 7-8). It is well settled that the burden of establishing the significance of data in the record,
with respect to unexpected results or for other purposes, rests with appellants, which burden is not
carried by mere arguments of counsel. See generally, In re Geisler, 116 F.3d 1465, 1470, 43
USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685,
1689-90 (Fed. Cir. 1996); In re Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed.
Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak,
455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972); In re Borkowski, 505 F.2d 713, 718, 184
USPQ 29, 33 (CCPA 1974); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA
1971). Appellants have not carried their burden on this record.
We find that each of the compared lubricating oil compositions contains “polyamino alkenyl or
alkyl succinimide” (specification, page 11, line 18). While lubricating oil compositions containing this
ingredient, along with other listed ingredients (id., page 11, lines 15-23), would fall within appealed
claim 1 in view of the transitional term “comprising” as long as the specified lubricating oil, phenate and
sulfonate ingredients are present as specified,3 it is not a required ingredient in either claim 1 and is not
disclosed in Vernet. We further find, based on the reported wt % (id., page 12), that the wt % of the
phenate based on the phenate and the sulfonate present in the lubricating oil compositions of invention
Examples 2 and 3 is 93.59% and 96.85%, respectively, and that the wt % of this same ingredient in the
compositions of Comparative Examples 4 through 7 is 90.22%, 86.73%, 83.11% and 61.76%,
3 See Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801,
1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising - meaning containing at least
- five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA
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