Appeal No. 1997-0494
Application 08/275,860
equivalents which read Comparative Example 7 through 4 (Comparative Example 6 marked), invention
Examples 2 and 3 (invention Example 3 marked) and Comparative Example 1.
Appellants contend that the data “shows that the average viscosity increase due to soot loading
is significantly lower when the total base equivalents donated by the phenate is at least 90% of the total
donated by the phenate and sulfonate (7% less than when the phenate is 85% [sic, 75%] of the total
base equivalents donated by the phenate and sulfonate),” pointing out that Example 3 is the worst of the
invention Examples while Comparative Example 6 is the best of the comparative Examples, which
“difference is even more pronounced, when looking at the general trends” in the data (brief, pages 7-8).
The examiner is of the view that the “data show a difference in the degree that viscosity increases due to
soot loading, but not a difference in the” this property, and further points out that the difference in rust
rating is also a matter of degree (answer, page 5).
At the outset, we find that the Comparative Examples do not reflect the teachings of Vernet for
several reasons. First, as we noted above, Vernet does not teach or disclose the use of a “polyamino
alkenyl or alkyl succinimide” which is found in all of the compared lubricating compositions. And,
second, Comparative Example 1 does not contain an overbased carbonated metal alkyl aryl sulfonate
taught as taught by Vernet. Thus, at least to this extent, the showing does not reflect the closest prior
art. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979) (“A Rule 132
affidavit, to be effective, must compare the claimed subject matter with the closest prior art.”).
Furthermore, in the absence of an explanation of the practical significance of the results with respect to
both of the properties tested in the specification, the presence of this ingredient would appear to
obscure any actual difference in result with respect to either of the tested properties which may be due
to the difference in the content of the percent of the total base equivalents provided by the phenate. See
In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966). In any event, even if the
evidence on this record was found to show unexpected results, the presence of the unnecessary
succinimide ingredient alone establishes that the evidence is not commensurate in scope with the
appealed claims. See In re Kulling, 897 F.2d 1147, 1149-50, 14 USPQ2d 1056, 1058 (Fed. Cir.
1990); In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808-09 (CCPA 1979).
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