Ex Parte Wollenberg et al - Page 16

                Appeal 2007-0511                                                                                 
                Application 10/699,508                                                                           
            1   measuring the deposits formed by the sample under high-temperature thin-                         
            2   film oxidation conditions.  Final Office Action mailed November 4, 2005 at                       
            3   8-9; Answer at 7.                                                                                
            4          The Examiner concludes (Final Office Action mailed November 4,                            
            5   2005 at 9; Answer at 7):                                                                         
            6                Based upon the combination of Kolosov et al and either                              
            7          O’Rear or Gatto, it would have been obvious to one of ordinary                            
            8          skill in the art at the time of the instant invention to screen the                       
            9          lubricant/additive compositions in the combinatorial array                                
           10          taught by Kolosov et al for oxidation stability since Kolosov et                          
           11          al teach that the plurality of samples in the array are screened                          
           12          for various material characteristics, and both O’Rear and Gatto                           
           13          teach that it is common to screen lubricating oil compositions                            
           14          for their oxidation stability by either determining the time                              
           15          required for a lubricant sample to consume a predetermined                                
           16          amount of oxygen or by measuring the amount of deposits                                   
           17          formed by a lubricant sample exposed to oxidation reaction                                
           18          conditions.                                                                               
           19                       a.     Step of measuring oxidation stability                                 
           20          Claim 1 recites a high throughput method for screening lubricating oil                    
           21   compositions, under program control, comprising the step of “measuring                           
           22   the oxidation stability of each sample to provide oxidation stability data for                   
           23   each sample.”                                                                                    
           24          The Appellants argue that O’Rear and Gatto do not disclose or                             
           25   suggest the invention of claim 1.  Appeal Brief at 10-11, 12.  Specifically,                     
           26   the Appellants argue that neither O’Rear nor Gatto discloses, motivates, or                      
           27   suggests an automatic high throughput method operated under program                              
           28   control, i.e., one that automatically screens lubricating oil compositions for                   
           29   oxidation stability.  Appeal Brief at 14.                                                        



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