Appeal No. 1997-0494
Application 08/275,860
any event, the showing with respect to two compositions outside of the teachings of the reference is
insufficient to establish that the differences shown would obtain with other lubricating compositions
encompassed by appealed claim 1. See In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289,
295-96 (CCPA 1980); Boesch, 617 F.2d at 277-78, 205 USPQ at 219-20; In re Lindner, 457
F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972).
Finally, we have considered appellants’ arguments that patentability can reside in a “parameter .
. . not previously recognized to be result-effective” and the authority cited in support of this position.
We cannot agree with appellants that the limitation that “the total base equivalents donated by the
phenate is at least 90% of the total base equivalents donated by the phenate and the sulfonate” is an
unexpected result effective variable because, as pointed out by the examiner (answer, page 5), “Vernet
teaches that the additive composition may contain up to 90% of the phenate, and this teaching would
[have] reasonably suggested that a higher level of the phenate than the sulfonate may be used.” Thus,
on this record, appellants have done no more than determine the optimum amount of the total base
equivalents donated by the phenate following the teachings of Vernet and have not established the
criticality of the claimed range for the reasons we have set forth above.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Vernet with appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 1, 3 and 4 would have been obvious as a matter of law under 35 U.S.C. § 103.
The examiner’s decision is affirmed.
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007