Appeal No. 2005-1816 Παγε 6
Application No. 09/727,622
order to reduce the amount of phosphorus-containing additives while still providing the
desired antiwear properties, so as to arrive at the subject matter of appellants’ claim 1.
Obviousness does not require absolute predictability. Only a reasonable
expectation that the beneficial result will be achieved is necessary to show obviousness.
In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir. 1986).
Manka teaches that the inventive lubricating compositions are effective in a variety of
applications including crankcase oils for spark-ignited and compression-ignited internal
combustion engines (column 27, lines 14-17). These teachings provide no indication
whatsoever that they are limited to internal combustion engines having cam-driven
valvetrains. In accordance with those teachings, one of ordinary skill in the art would
have had a reasonable expectation of success in using the low phosphorus-content
lubricating oils of Manka with an internal combustion engine having a camless valvetrain
for increased flexibility in engine valve control as taught by Schechter in order to
achieve the emission control related advantages of phosphorus reduction while
maintaining the desired antiwear properties.
In light of the above, the rejection of claim 1 as being unpatentable over
Schechter in view of Manka is sustained. The appellants have not argued separately
the patentability of claims 3-9 and 13-41 apart from claim 1, thereby allowing these
claims to stand or fall with claim 1 (see In re Young, 927 F.2d 588, 590, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140
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