Appeal No. 2005-2510 Page 7
Application No. 10/122,049
the prima facie case of obviousness established by the examiner.
See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). Appellants, however, do not provide an adequate
explanation regarding any factual showing in the specification
and declaration tests to support a conclusion of unexpected
advantages for the claimed subject matter.
In this regard, the specification example C and the
declaration modified C composition for which unexpected results
are alleged have not been shown to be commensurate in scope with
the appealed claim. For example, the appealed claim does not
require a fluid including a combination of a tributyl phosphate
and an unspecified triaryl phosphate let alone in the percentage
amounts tested. Nor does the appealed claim require the amounts
of VI improver and other unspecified additives as employed in the
tested examples, as reported in paragraph 19 and Table 2 of the
specification. See In re Kerkhoven, 626 F.2d 846, 851, 205 USPQ
1069, 1072-73 (CCPA 1980) and In re Clemens, 622 F.2d 1029, 1035,
206 USPQ 289, 296 (CCPA 1980).
Moreover, the comparative examples employing lithium
triflate (Fluid A), potassium triflate (Fluid B) and potassium
perfluorooctyl sulfonate (Fluid D) are not representative of the
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