Appeal No. 2004-1861
Application No. 09/846,483
endeavor, whether the reference is reasonably pertinent to the
particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1211-12 (Fed. Cir.
2004); In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1060 (Fed.
Cir. 1992).
Here, the appellants’ own specification (page 1, lines 7-
10) indicates to one of ordinary skill in the art that the
claimed lubricating oil composition can be used for purposes
other than TPEO including “auxiliary power generation
applications” and “main propulsion stationary land-based
engines...” In addition, one of ordinary skill in the art would
have considered all lubricating compositions having a major
amount of lubricating oil, a minor amount of one or more
aromatic carboxylates, and a minor amount of a metal
dialkyldithiophosphate. Contrary to the appellants’ apparent
belief, one of ordinary skill in the art would have considered
the teachings of Clarke to be highly relevant in view of the
similarities in terms of structure and function between the
claimed composition and Clarke’s composition. In re Bigio, 381
F.3d at 1326, 72 USPQ2d at 1212.
The appellants urge that Clarke’s “lubricating oil
compositions are not constantly circulated through the engine
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