Appeal No. 1998-1152
Application 08/489,827
Schnur because “Schnur teaches the use of polyol esters as hydraulic fluids” and Kita teaches base
stock that “provides excellent fluidity with high temperature stability” (id.).
In their brief (pages 10-18), appellants submit that Schnur discloses esters prepared from
carboxylic acids having 5-10 carbon atoms and Kita discloses straight-chain aliphatic esters of 7-18
carbon atoms which are derived from a mixture of straight chain carboxylic acids (brief, pages 12-13).
Thus, appellants point out that neither Schnur or Kita disclose or teach an ester containing an isostearic
acid moiety, a branched-chain aliphatic moiety, in an ester, and that while Kita discloses carboxylic
acid mixtures which contain 28.95 to 39.04 wt% of the C18 oleic acid, which is in the claimed range for
this ingredient, the reference further teaches that such mixtures contain only 1.0 to 1.35 wt% of the
straight-chain stearic acid, which is well below the claimed range for isostearic acid. See the mixtures
listed at pages 3-4 and 4-5. Thus, appellants contend that not only does Kita fails to teach either the
branched-chain isostearic acid or an amount of stearic acid that falls within the claimed range, but the
esters of this reference are not those of Schnur, and therefore even if one of ordinary skill in this art
combined the two references, the resulting mixture would not fall within the appealed claims. The
examiner does not respond to these arguments in the answer (page 5).6
It seems to us that the examiner’s position is essentially that the claimed synthetic esters
containing at least 15% by mole of branched-chain isostearic acid moieties are structurally related to the
esters of Schnur and the esters of Kita which contain about 1 wt% of stearic acid, because she has not
factually support her apparent position that there are no differences in properties between these two sets
of esters even in view of appellants’ analysis showing actual differences in structure and properties
based on claim limitations. However, the mere allegation of structural similarity without supporting
evidence that one of ordinary skill in the art would have made the necessary modification to the esters of
Schnur and/or Kita in order to arrive at the claimed partial esters is not sufficient to establish a prima
facie case of obviousness. See In re Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44
(Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s
6 While the examiner states that appellants’ arguments “are not persuasive for reasons of record,” no
Office action is identified as containing a treatment of these arguments and we have not been able to
identify such action.
- 3 -
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007