Appeal 2007-4193
Application 10/367,432
the engine,” wherein “[i]n the presence of water and at lower temperature,
acids may be formed which may condensate in the intake system,” lowering
the Total Base Number (TBN) “of the crankcase lubricant and may
ultimately cause an increase in bearing corrosion” (Specification 1:27-31).
We determine the combined teachings of Willis and Stuart, the scope
of which we determined above, provide convincing evidence supporting the
Examiner’s case that the claimed lubricating oil additive composition
encompassed by claim 1, as we interpreted this claim above, would have
been prima facie obviousness of to one of ordinary skill in the internal
combustion engine crankcase lubricating oil arts. We cannot subscribe to
Appellants’ contention that this person would not have combined the
teachings of these references. Indeed, Willis and Stuart pertain to additives
for lubricating oils, including crank case lubricating oils, and would have led
this person to lubricating compositions for such purposes that would
combine the benefits for that use which the additives of each of the
references provide, as the Examiner argues. Furthermore, one of ordinary
skill in this art would have selected a suitable workable or optimum number
average molecular weight range for the polyisobutenyl group of the succinic
anhydride for the application for which the additive is intended from the
range taught by Stuart, as the Examiner argues. See, e.g., In re Boesch, 617
F.2d 272, 275-76, 205 USPQ 215, 218-19 (CCPA 1980) (the prior art would
have suggested the experimentation necessary to achieve the claimed
compositions as discovery of an optimum value of a result effective variable
in a known process is ordinarily within the skill of the art); In re Aller,
7
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