Appeal No. 2001-2094
Application 09/203,894
of their invention in the specification rather than coming from
the applied prior art. Hence, the record indicates that the
examiner used impermissible hindsight when rejecting the claims.
See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the examiner’s rejection.
REMAND
The examiner has not addressed on the record the appellants’
admitted prior art. The appellants acknowledge that “[t]he
secondary diarylamines are well known antioxidants”
(specification, page 4, line 12) and that “[l]ubricant
compositions containing various secondary diarylamines are widely
known in the art. The use of 2,2,4-trimethyl-1,2-
dihydroquinoline polymers is also known, although to a lesser
extent” (specification, page 1, lines 19-21). The examiner and
the appellants should address on the record whether it would have
been obvious to one of ordinary skill in the art add to a
lubricating oil a combination of the known secondary diarylamine
and 2,2,4-trimethyl-1,2-dihydroquinoline polymer lubricating oil
antioxidants. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069,
1072 (CCPA 1980).
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