Appeal 2007-0510
Application 10/699,507
1 relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
2 Ct. at 1734, 82 USPQ2d at 1389, Graham, 383 U.S. at 17-18.
3 The question under 35 U.S.C. § 103 is not merely what the references
4 teach but what they would have suggested to one of ordinary skill in the art
5 at the time the invention was made. All disclosures of the prior art,
6 including unpreferred embodiments, must be considered. In re Lamberti,
7 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
8 One of ordinary skill in the art is presumed to have skills apart from
9 what the prior art references expressly disclose. See In re Sovish, 769 F.2d
10 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill is
11 also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at
12 1742, 82 USPQ2d at 1397.
13 A rejection premised upon a proper combination of references cannot
14 be overcome by attacking the references individually. In re Keller, 642 F.2d
15 413, 426, 208 USPQ 871, 882 (CCPA 1981).
16 E. ANALYSIS
17 1. Claims 39-42
18 Claim 39 recites:
19 A system for screening lubricant performance, under
20 program control, comprising:
21 a) a plurality of test receptacles, each containing a different
22 lubricating oil composition sample comprising (a) a major
23 amount of at least one base oil of lubricating viscosity and (b) a
24 minor amount of at least one lubricating oil additive . . . .
25
26 The Examiner found that compounds analyzed by the system
27 disclosed in Kolosov can be lubricants having an additive therein. The
28 Examiner found that “[i]t is inherent that in a lubricant composition having
12
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