Appeal No. 1998-1152
Application 08/489,827
Kita.4,5 For the reasons pointed out by appellants in the brief and reply brief, the examiner has failed to
make out a prima facie case of obviousness, to which we add the following for emphasis.
It is well settled that the examiner has the burden of establishing a prima facie case of
obviousness by showing that some objective teaching, suggestion or motivation in the applied prior art
taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, Pro-Mold and Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
The appealed claims, as represented by appealed claim 1, are drawn to a flame retardant
hydraulic oil containing a hydraulic base oil comprising a synthetic ester, wherein the ester has is formed
from certain specific di- and polyols and a carboxylic acid, wherein the carboxylic acid comprises at
least oleic acid and isostearic acid, both C18 carboxylic acids, each in the amount of at least 15% by
mole, or a total of at least 30% by mole, of the total carboxylic acid, that is. the remaining 70% by mole
can be other carboxylic acids. The examiner finds that Schnur (col. 4, lines 36-43) teaches that “[i]n
addition to . . . simple ester and diester products,” there may be used as an additive in synthetic
hydrocarbon base oil containing hydraulic fluid, “polyol esters” prepared from “such as neopentyl glycol
or trimethylolpropane” and an “aliphatic monocarboxylic acids having about 5 to 10 carbon atoms”
(answer, pages 3-4). The examiner further finds that Kita (see, e.g., pages 2-4 and 4-5) teaches using
a mixture of acids that includes oleic acid and stearic acid used to prepare an ester of
trimethylolpropane for use as a base stock of a hydraulic fluid (id., page 4). The examiner takes the
position that one of ordinary skill in the art would use the base stock of Kita in the composition of
4 The examiner has designated this reference in the answer as “JP 18,467.” We refer in our opinion to
the translation of Kita prepared for the USPTO by The Ralph McElroy Translation Company (March
2001).
5 Answer, pages 3-5. The examiner withdrew the ground of rejection based on the judicially created
doctrine of obviousness-type double patenting (answer, page 2).
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