Appeal No. 2005-1816 Παγε 5
Application No. 09/727,622
In finally rejecting claims 1, 3-9 and 13-41, the examiner contends that it would
have been obvious to one of ordinary skill in the art "to use the low-phosphorus
lubricating oil composition [taught by Manka] on the camless engine [of Schechter] to
reduce wear and exhaust gas emissions because of the low amount of phosphorus"
(final rejection, pages 2-3). The appellants argue that the examiner's rejection should
be reversed because the references applied by the examiner fail to provide support for
the examiner's stated motivation to combine and evidence of a reasonable probability of
success and thus fail to establish a prima facie case of obviousness of the claimed
subject matter.
As to the motivation to combine, Schechter would have taught one of ordinary
skill in the art at the time of the appellants’ invention the advantage, namely, increased
flexibility in engine valve control, of using a camless valvetrain of an internal combustion
engine over conventional cam-driven valvetrains but is silent with respect to the
particular lubricant used in such camless valvetrain, leaving the skilled artisan to select
an appropriate lubricant. Such a skilled artisan would further have been motivated by
Manka’s teachings in the second paragraph of column 1 to select for use with a camless
valvetrain of the type taught by Schechter one of Manka’s low phosphorus-content
lubricants, in particular the embodiments having the lowest phosphorus contents, such
as those having phosphorus contents up to about 0.05% or 0.08% by weight, containing
compositions that can function as either partial or complete replacement for ZDDP, in
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