Appeal No. 1997-3770
Application No. 08/451,888
antiwear capabilities. See Le Suer, column 1, lines 29-31, Gallo, abstract and
Froeschmann, Example I. Accordingly, the improved results obtained by appellants are
merely those that would be expected from the addition of a molybdenum compound.
Hence, in our view, they are expected beneficial results which are evidence of obviousness,
just as unexpected results are evidence of unobviousness. In re Gershon, 372 F.2d 535,
537, 152 USPQ 602, 604 (CCPA 1967).
Moreover, each of the primary references discloses a lubricant composition already
containing a molybdenum compound or complex as an antiwear agent.
Hence, the comparative examples which fail to include that component, do not reflect the
closest prior art relied upon in our opinion. In re Baxter Travenol Labs., 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705,
222 USPQ 191, 196 (Fed. Cir. 1984).
Furthermore, we conclude that the showing in the Constans Declaration is not
commensurate in scope with the degree of protection sought by the claimed subject
matter. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In
re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971).
The data present in the Declaration is drawn to examples which contain only a single
reference oil, page 2, paragraph 6, although each of the requisite compounds required by
the claimed subject matter are generic to substantial numbers of compounds and polymers
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