Appeal No. 2000-0994
Application 09/097,123
Wright teaches away from the claimed compositions, and indeed, the reference shows that
compositions containing this ingredient have dielectric properties as we found above.1 Thus, the
issue reduces to whether there is in the record evidence that the ranges with respect to the
viscosity of the phenyl-methyl siloxane ingredient and the amounts of the ingredients present in
the claimed compositions are critical vis-à-vis the ranges disclosed for the same ingredients in
Lontz and Wright which encompass or overlap with the claimed ranges. The appellants do not
allege such evidence and we find none.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in each of Lontz and Wright with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 7 would have been obvious as a matter of
law under 35 U.S.C. § 103(a).
We cannot reach the same result with respect to appealed claims 8 and 9 which are drawn
to a silicone rubber spark plug boot having the claimed dielectric lubricant disposed in the boot
cavity thereof, and a method of lubricating a spark plug boot by disposing the claimed dielectric
lubricant on the walls of the cavity, respectively. The examiner admits that neither Lontz nor
Wright teaches the use of the compositions disclosed therein in connection with lubricating the
cavity of a sparkplug boot, but maintains with respect to Lontz that one of ordinary skill in the art
would mold the composition “onto various articles such as spark plugs [sic, sparkplug boot]” to
take advantage of the properties of the compositions (answer, pages 4 and 6). We observe that
even if this was so, Lontz teaches that the polyorganosiloxane lubricant is removed from the
composition at some point in forming the molded article (see, e.g., col. 3, lines 53-58, and col. 8,
lines 65-71). The examiner does not even submit such an explanation for Wright, alleging only
1 See In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”).
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