Appeal No. 1997-1556
Application 08/340,247
three components: (1) a phosphoric acid ester (2) a halogenated hydrocarbon and (3) a viscosity index
improver. Moreton teaches that the phosphoric acid esters include those having three organic radicals
including the aryl radicals phenyl, cresyl or xylyl; alkyl radicals having 4-10 carbon atoms; and alkoxyalkyl
radicals having 3-6 carbon atoms. Tricresyl phosphate, tributyl phosphate and butyoxyethyl phosphate are
included in a long list of specific esters .
The Kulazhanov and Thornley compositions differ from the compositions of claim ? in that, neither
Kulazhanov nor Thornley describe a composition including trialkoxyalkylphosphate. Noting this difference
the examiner concluded:
It would have been obvious to one of ordinary skill in the art to substitute the
tributoxyethyl phosphate of Moreton for the tributyl phosphate of Kulazhanov et
al or the tricresyl phosphate of Thornley because Moreton teaches the equivalence
of each of these phosphate esters as major components in either a hydraulic fluid
or a lubricant composition.
Paper 10, p. 5.
We do not understand what the examiner means by “equivalence of each of these phosphate esters
as major components in either a hydraulic fluid or a lubricant composition.” We assume that by
“equivalence” the examiner means that the hypothetical person having ordinary skill in the art would
recognize tricresyl phosphate, tributyl phosphate and tributoxyethyl phosphate to have similar properties
and would behave similarly in similar environments. In any event, we do not believe that the evidence
relied upon by the examiner creates a prima facie case of obviousness. “Where claimed subject matter has
been rejected as obvious in view of a combination of prior art references, a proper analysis under § 103
requires, inter alia, consideration of two factors: (1) whether the prior art would have suggested to those
of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would also have revealed that in so making or carrying out, those
of ordinary skill would have a reasonable expectation of success.” In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
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