Appeal No. 2004-1861
Application No. 09/846,483
v. Biocraft Labs. Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir. 1989); In re Arkley, 455 F.2d 586, 587, 172 USPQ 524,
526 (CCPA 1972); In re Susi, 440 F.2d 442, 445, 169 USPQ 423,
425 (CCPA 1971).
With respect to separately argued claim 10, we agree with
the examiner’s analysis (answer at 4) that one of ordinary skill
in the art would have found it prima facie obvious to use
Clarke’s lubricating oil composition in any marine diesel
engine, including the here recited “medium speed compression-
ignited marine engine,” as expressly taught by the reference.
The appellants argue that the experimental data in the
specification (pages 12-14) “clearly demonstrate that compared
to the dispersant-containing formulations representing
conventional TPEO [trunk piston engine oil] compositions, the
dispersant free compositions of the present invention actually
provide improved piston deposit control.” (Appeal brief at 5.)
We, like the examiner (answer at 5-6), do not find the relied
upon experimental evidence to be sufficient to rebut the
examiner’s prima facie case of obviousness. While Oils 1 and 2
are specific formulations made from an unidentified “basestock,”
10.10 or 12.50 parts of an overbased calcium salicylate having a
TBN of 168, 5.65 or 6.84 parts of an overbased calcium
5
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