Appeal 2007-0510
Application 10/699,507
1 The Appellants do not challenge the double patenting rejections on
2 appeal. Rather, the Appellants state, “Upon resolution of all outstanding
3 issues remaining in this application, Appellants will submit a Terminal
4 Disclaimer to obviate the provisional rejections.” Appeal Brief at 31.
5 F. OTHER ISSUES
6 Based on the record before us, we find that the definition of “additive”
7 relied on by the Examiner and the teachings in O’Rear (paras. [0002] and
8 [0046]) suggest that lubricants comprising a minor amount of an additive
9 would have been known to one of ordinary skill in the art at the time the
10 Appellants’ application was filed. In the event of further prosecution, the
11 Examiner should consider the obviousness of a lubricating oil composition
12 comprising a major amount of at least one base oil of lubricating viscosity
13 and a minor amount of at least one lubricating oil additive as recited in
14 claim 39. Nothing in our opinion should be construed as precluding a
15 rejection under 35 U.S.C. § 103(a) of claims 39-42. In fact, it would appear
16 that such a rejection would be entirely appropriate.
17 G. CONCLUSIONS OF LAW
18 The Appellants have sustained their burden of showing that the
19 Examiner erred in rejecting claims 39-42 under 35 U.S.C. § 102(e) as being
20 anticipated by Kolosov.
21 The Appellants have not sustained their burden of showing that the
22 Examiner erred in rejecting claims 1-9, 18-29, 38, and 43 under 35 U.S.C. §
23 103(a) as being unpatentable over the combination of Kolosov, O’Rear, and
24 Tolvanen.
25 The Appellants have not sustained their burden of showing that the
26 Examiner erred in rejecting claims 10-13, 30-33, 44, and 45 under 35 U.S.C.
22
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