Appeal 2007-4193
Application 10/367,432
Appellants raise two issues. Appellants first contend there is no
motivation to combine the references because Willis’ Examples teach away
from adding Stuart’s corrosion inhibitor to a lubricating oil composition
containing Willis’ additives (Br. 8). In this respect, Appellants rely on
Willis Example V, showing the results of evaluating lubricating oil
formulations for bearing weight loss, contending “runs 7 and 10, which
contained a borated succinimide and a carbonated succinimide,” and are
based on Willis’ compositions, “had smaller amounts of bearing loss when
compared to runs 11 and 12, which contained only a carbonated
succinimide” (Br. 10, citing Willis, col. 11, ll. 42-45). Appellants contend
the bearing weight loss exhibited by Willis’ illustrative examples “fall below
the . . . maximum weight loss standard,” and thus, “one of ordinary skill in
the art would not have been motivated to add a corrosion inhibitor to”
Willis’ lubricating oil formulations (Br. 10).
Appellants next contend Stuart’s Example A illustrates a corrosion
inhibitor “synthesized with 1000 molecular weight polyisobutylene” and the
reference “does not teach or suggest a corrosion inhibitor derived from a
polyisobutylene having a molecular weight of between 1100 and 1500,”
such that the combination of Willis and Stuart would not result in the
claimed compositions (Br. 11). Appellants rely on a comparison in the
Specification of a lubricating oil composition containing 0.40 wt% of
corrosion inhibit 3, prepared with 1300 molecular weight polyisobutylene as
claimed, set forth in Table 4, with a lubricating oil composition containing
0.40 wt% of corrosion inhibitor 2, prepared with 1000 molecular weight
polyisobutylene as taught in Stuart, set forth in Table 4 (Br. 12;
4
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