Appeal 2007-1483
Application 10/344,390
The Appellants argue that Waddoups does not teach, suggest, or imply
that the disclosed lubricating oil composition is useful for reducing engine
wear. Appeal Brief at 6. The Appellants also argue that the lubricating oil
composition disclosed in Waddoups was never evaluated in an actual
internal combustion engine. Appeal Brief at 7.
We find that Waddoups expressly discloses that the lubricating oil
composition contains phosphorus from a ZDDP compound, and the ZDDP
compound provides antioxidant and anti-wear properties to the lubricating
oil composition. Waddoups 1:31-49 and 8:51-54; see also Appellants’
Specification 3:5-6 (disclosing that anti-wear agent is a ZDDP compound).
To the extent that the lubricating oil composition may not have been actually
tested in an internal combustion, this disclosure in Waddoups is no less
probative. Cf. Gould v. Quigg, 822 F.2d 1074, 1078, 3 USPQ2d 1302, 1304
(Fed. Cir. 1987) (an applicant need not have actually reduced the invention
to practice prior to filing).
The Appellants further argue that Waddoups discloses that the
phosphorus content of the disclosed lubricating oil composition is up to 0.1
weight percent, preferably from 0.025 to 0.1 weight percent. The Appellants
argue that Waddoups does not attach any significance to a lubricating oil
composition having a phosphorus content of less than 0.5 weight percent.
Appeal Brief at 7.
We find that the phosphorus range disclosed in Waddoups (0.025 to
0.1 weight percent) overlaps the claimed phosphorus range (no more than
0.5 weight percent). It is well-settled that where the difference between the
claimed invention and the prior art is an overlapping range, the Appellants
must show that the particular range is critical by evidence of unexpected
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