Appeal 2007-0510
Application 10/699,507
1 the record before us, it is reasonable to find that the lubricant compositions
2 disclosed in Kolosov include lubricant compositions containing an additive.
3 Kolosov does not expressly disclose that the lubricant compositions
4 comprise a major amount of at least one base oil of lubricating viscosity and
5 a minor amount of at least one lubricating oil additive. However, the record
6 before us establishes that one of ordinary skill in the art would have
7 understood “additive” to mean any substance incorporated into a base
8 material, usually in a low concentration. See The Condensed Chemical
9 Dictionary at 20; see also O’Rear, paras. [0002] and [0046]. We find that
10 one of ordinary skill in the art would have reasonably expected the lubricant
11 compositions in Kolosov, comprising a lubricant and an additive, to have a
12 major amount of a base oil and a minor amount of an additive.
13 The Appellants also argue that Tolvanen does not disclose or suggest
14 a system for screening oil samples by maintaining the sample at a
15 predetermined temperature for a predetermined time. Appeal Brief at 24.
16 The Appellants’ argument is not persuasive because claim 43 does not
17 require a sample to be maintained at a predetermined temperature for a
18 predetermined time. Compare claims 1 and 20.
19 Finally, the Appellants argue that the Examiner has failed to establish
20 that Tolvanen provides a “teaching, motivation, or suggestion” for
21 modifying Kolosov to arrive at the claimed invention. Appeal Brief at 26.
22 Kolosov discloses a high throughput system for measuring numerous
23 properties of lubricant compositions, including viscosity, thermal
24 degradation, aging characteristics, and agglomeration or assemblage of
25 molecules. We find that one of ordinary skill in the art would have found
26 these properties useful in determining the storage stability of lubricant
16
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