Appeal No. 2000-1447
Application No. 08/987,404
point to comparative data in the present specification which
demonstrates that ester oils having viscosity and saponification
values outside the claimed ranges "uniformly result in
lubricating oils which are markedly inferior in terms of friction
reduction over a wide temperature range" (page 6 of Brief, last
paragraph).
Appealed claims 1 and 3-8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Arai in view of Seiki and
Culpon.1
Upon careful consideration of the opposing arguments
presented on appeal, we find that the examiner has not
established a prima facie case of obviousness for the claimed
subject matter. Accordingly, we will not sustain the examiner's
rejection.
Arai, the primary reference, discloses a lubricating oil for
internal combustion engines comprising a base stock that may
comprise synthetic oils containing mixtures of polyolefin and
ester. However, Arai is silent on the saponification value of
1 The examiner's statement of the rejection in the Answer,
which includes only claims 1, 3-6 and 8, is considered
inadvertent error. We note that the Answer did not expressly
withdraw the final rejection of claim 7 under 35 U.S.C. § 103,
although the examiner's final rejection under 35 U.S.C. § 112,
first paragraph, is explicitly withdrawn (see page 3 of Answer).
-3-
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