Appeal No. 1997-1875
Application No. 08/451,378
Miles or the U.S. patent to Miles or the European reference to
Umemoto cannot be sustained.
We reach a different conclusion, however, with respect to
the examiner's § 103 rejections. Contrary to the appellants'
apparent belief, one having an ordinary level of skill in the
art would have been motivated to select the particular
variables necessary to yield the here claimed compounds
because of the generic teachings of the respective references
which disclose that all of the compounds embraced thereby are
useful as fluid additives (as are the here claimed compounds).
The mere fact that these respective references may embrace a
large number of compounds does not militate against an
obviousness conclusion with respect to each of them. In re
Merck, 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.
1989).
For these reasons, it is our determination that the
reference evidence adduced by the examiner establishes a prima
facie case of obviousness within the meaning of 35 U.S.C. §
103. Because the appellants have submitted rebuttal evidence
of nonobviousness, we now proceed to retrace our
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