Appeal 2007-4193
Application 10/367,432
Specification Tables 3 and 4). Appellants state “Table 4 shows that the
lubricating oil composition containing 0.40 wt% corrosion inhibitor 3 results
in [the loss of] 42 mg/kg of lead whereas Table 3 shows that the lubricating
oil composition containing 0.40 wt% corrosion inhibitor 2 results in [the loss
of] 66 mg/kg of lead” (id.). Appellants similarly rely on a comparison of
lubricating compositions containing 0.50 wt% of corrosion inhibitor 2,
prepared with 1000 molecular weight polyisobutylene as taught in Stuart, set
forth in Table 2 with the composition containing 0.40 wt% of corrosion
inhibit 3, set forth in Table 4, stating the composition with corrosion
inhibitor 1 results in the loss of 51 mg/kg of lead, showing corrosion
inhibitor 3 “decreases corrosion better than corrosion inhibitor 1” (Br. 12-
13; Specification Tables 2 and 4). Appellants contend that these results ‘are
clearly unexpected corrosion results, which could not have been predicted
from the teaching of the cited references” (Br. 13).
The Examiner responds that one of ordinary skill in the art would
combine the additives of Willis and Stuart in a lubricating composition
because Willis’ compositions are used in internal combustion engine
crankcase lubricants and one of ordinary skill in the art would have included
Stuart’s corrosion inhibitor therewith, citing In re Kerkhoven, 626 F.2d 846,
850, 205 USPQ 1069, 1072 (CCPA 1980) (Answer 6). The Examiner
further responds the evidence in the Specification is not persuasive because
“[i]t would have been expected that there be some variation in the inhibitor
properties over” the preferred molecular weight range of about 800-3200
taught by Stuart for the polyisobutenyl group (id. 7). The Examiner finds
claim 1 is not limited to “specific corrosion inhibitors having a hydrocarbyl
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