Appeal 2007-0510
Application 10/699,507
1 compositions. Tolvanen also discloses a system for measuring the storage
2 stability of oil samples. Based on the record before us, we find that it would
3 have been reasonable for one of ordinary skill in the art to employ the
4 system disclosed in Tolvanen as an alternative means for measuring the
5 storage stability of lubricant compositions in Kolosov. In re Fout, 675 F.2d
6 297, 301, 213 USPQ 532, 536 (CCPA 1982) (“Express suggestion to
7 substitute one equivalent for another need not be present to render such
8 substitution obvious.”).
9 For the reasons set forth above, it is reasonable to conclude that the
10 invention of claim 43 would have been obvious to one of ordinary skill in
11 the art in view of the combined teachings of at least Kolosov and Tolvanen.
12 3. Claims 1-9, 18, and 19
13 The Examiner finds that Kolosov does not teach that the disclosed
14 lubricants can be screened for storage stability by optically measuring
15 sediment formation in each sample. The Examiner finds that O’Rear and
16 Tolvanen optically measure the formation of sediment to determine the
17 storage stability of oils. Answer at 7.
18 Claim 1 is not limited to measuring storage stability by measuring the
19 formation of sediment. Therefore, it is not necessary to consider the
20 teachings of O’Rear and Tolvanen in connection with the step of measuring
21 storage stability recited in claim 1.
22 The Appellants argue that Kolosov does not disclose or suggest the
23 invention of claim 1. Specifically, the Appellants argue that Kolosov merely
24 discloses that the invention may be used to screen most any flowable
25 material, such as pharmaceuticals, coatings, cosmetics, adhesives, inks,
17
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