Ex Parte Wollenberg et al - Page 3


                   Appeal No. 2007-0495                                                                                             
                   Application No. 10/699,510                                                                                       

                           The appellants contend that the claimed subject matter would not have been                               
                   obvious in view of the teachings in Kolosov alone or in combination with Shtein.                                 
                   Specifically, the appellants argue that (1) the claimed lubricant oil compositions would                         
                   not have been obvious in view of the teachings in Kolosov and (2) the means for                                  
                   combining selected quantities of at least one base oil and at least one additive recited in                      
                   claim 23 would not have been obvious in view of the combined teachings of Kolosov and                            
                   Shtein.  The examiner held that the claimed lubricant oil compositions would have been                           
                   obvious in view of the teachings in Kolosov.  The examiner further held that the claimed                         
                   means for combining selected quantities of at least one base oil and at least one additive                       
                   would have been obvious in view of the combined teachings of Kolosov and Shtein.                                 
                                                       GROUPING OF CLAIMS                                                           
                           The appellants argue claims 1 to 4 and 6 to 22 as one group and claims 5 and 23                          
                   to 37 as another group.  Therefore, for purposes of this appeal, claims 2 to 4 and 6 to 22                       
                   stand or fall with patentability of claim 1 and claims 5 and 24 to 37 stand or fall with the                     
                   patentability of claim 23.  37 CFR § 41.37(c)(1)(vii) (2006).                                                    
                                                                 ISSUES                                                             
                           Have the appellants shown that the examiner has failed to establish that the                             
                   claimed lubricant oil compositions would have been obvious in view of the teachings in                           
                   Kolosov?                                                                                                         
                           Have the appellants shown that the examiner has failed to establish that it would                        
                   have been obvious to one of ordinary skill in the art to combine a base oil and an additive                      
                   using a mixing chamber in view of the combined teachings of Kolosov and Shtein?                                  



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