Appeal 2007-4193 Application 10/367,432 There is no dispute, and indeed, Appellants acknowledge, that Willis would have disclosed to one of ordinary skill in the art a composition of ethylene carbonate-treated succinimides and borated succinimides, and that Stuart would have disclosed to this person dispersed aromatic dicarboxylic acid corrosion inhibitors prepared from succinimides salts and terephthalic acid as claimed (Answer 3-5; Specification, e.g., 3:33, 6:8, and 7:10). With respect to the claim limitation “polyisobutenyl succinic anhydride, having a polyisobutenyl group with a number average molecular weight of about 1100-1500,” the Examiner finds “Stuart teaches that the R substituent on the alkenyl succinic anhydride reactant is a hydrocarbon radical having . . . preferably from about 50 to about 200 carbon atoms . . . [that] corresponds to a molecular weight . . . preferably from about 800-3200,” which encompasses the “claimed range for the number average molecular weight for the polyisobutenyl group of 1100-1500” (Answer 6-7, citing Stuart, col. 2, ll. 1-12). The Examiner finds Stuart’s disclosure is not limited to the illustrative examples therein, including “a molecular weight of 1000 for the polyisobutenyl substituent,” but would have fairly taught the range of 800 to 3200 to one of ordinary skill in the art (id. 7). The Examiner concludes that it would have obvious to one of ordinary skill in this art to combine the additives of Willis and that of Stuart to form a composition for lubricating oils because Willis discloses that lubricating oils for the crankcase of an internal combustion engine can contain additional additives to those disclosed therein and Stuart discloses the dispersed corrosion inhibitors can be used with various lubricant base oils (Answer 4-5, citing Willis, col. 5, l. 65 to col. 7, l. 7 and Stuart, col. 4, ll. 8-32). 3Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
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