Appeal No. 2003-0808
Application No. 09/343,334
With respect to separately argued claim 26, it would
reasonably appear that the polyalphaolefin of Cupples would
necessarily or inherently possess the claimed level of
hydrogenation, because Cupples teaches the “intimate contact of
the total liquid oligomer with the catalyst for a substantial
period of time.” In re Spada, 911 F.2d at 708, 15 USPQ2d at
1658; In re Best, 562 F.2d at 1255, 195 USPQ at 433-34. Whether
the rejection is based on inherency under 35 U.S.C. § 102 or on
obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and
compare prior art products. In re Best, 562 F.2d at 1255, 195
USPQ at 433-34.
For these reasons, we uphold the examiner’s rejection on
this ground.
IV. 35 U.S.C. § 103(a): Claim 25 over Cupples, Wu, Sauer, and
Van Dyck Fear
The examiner found that neither Cupples nor Sauer teaches
the use of diphenylamine as an antioxidant. (Answer, page 7.)
Nevertheless, the examiner found that Van Dyck Fear teaches that
diphenylamine is a known antioxidant for lubricating oil
compositions. (Column 5, lines 41-46.) Based on the collective
teachings of the prior art, the examiner determined one of
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