Appeal No. 1997-0494
Application 08/275,860
The presence of the unnecessary succinimide not withstanding, in the absence of an explanation
of the practical significance of the evidence, we find little basis for counsel’s view that the evidence in the
specification with respect to average viscosity increase due to soot loading shows “general trends”
establishing that a significant difference in properties occurs when at least 90% of the total base
equivalents is donated by the phenate. Indeed, on this record, the data is inconsistent with respect to
average viscosity increase due to soot loading either in the invention Examples when compared alone
(the more phenate by total base equivalents and wt %, Example 3, the worse the result) or with
Comparative Example 1 (100% phenate by total base equivalents and wt achieved the best rating along
with invention Example 2 which has a lower amount of phenate by total base equivalents and wt than
Example 3, both of which contain a sulfonate), or in the Comparative Examples. In comparison, we
find a trend in the rust rating data which shows that the rust rating decreases as the amount of phenate
(by total base equivalents and wt %) increases.
Accordingly, on this record, we find no evidence which establishes the criticality of the claim
limitation that phenate donates at least 90% of the total base equivalents. See Merck, supra; Longi,
supra. We further find that even if the criticality of this limitation was established as to one of the
properties, such a showing would not establish the criticality of this limitation with respect to the
teachings of Vernet because there is no evidence or explanation establishing that the results reported for
invention Examples 2 and 3, wherein the phenate falls outside of the “usual” wt % range shown in the
reference would obtain with phenates providing at least 90% of the total base equivalents falling within
said wt % range, which we demonstrated above to be within the teachings of the reference. Thus, on
this basis, the evidence does not address the thrust of the rejection. See Burckel, supra (“[T]he
affidavit does not even address the thrust of the rejection”). Moreover, even if the evidence did
demonstrate that unexpected results are obtained with the compositions of invention Examples 2 and 3
with respect to average viscosity increase due to soot loading, we find the evidence to be so disparate
with respect to the effectiveness of the composition and the % of the total base equivalents provided by
the phenate therein that it does not “permit a conclusion respecting the relative effectiveness of” other
claimed lubricating oil compositions and the lubricating oil compositions taught by Vernet, see In re
Payne, 606 F.2d 303, 316 n.10, 316-18, 203 USPQ 245, 256 n.10, 256-58 (CCPA 1979), and, in
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