Appeal 2007-4193
Application 10/367,432
220 F.2d 454, 456-58, 105 USPQ 233, 235-37 (CCPA 1955). (it is not
inventive to discover by routine experimentation optimum or workable
ranges for general conditions disclosed in the prior art). The fact that Stuart
does not illustrate a compound having a polyisobutenyl group falling within
the claimed range would not have led one of ordinary skill in this art away
from such a compound in view of the teachings this person would have
found in the reference. See, e.g., In re Lamberti, 545 F.2d 747, 750, 192
USPQ 278, 280 (CCPA 1976) (“The fact that neither of the references
expressly discloses asymmetrical dialkyl moieties is not controlling; the
question under 35 USC 103 is not merely what the references expressly
teach, but what they would have suggested to one of ordinary skill in the art
at the time the invention was made.”).
Thus, we agree with the Examiner that, prima facie, one of ordinary
skill in this art would have combined the teachings of Willis and Stuart, and
in routinely following the teachings would have reasonably arrived at the
claimed lubricating oil additive composition without recourse to Appellants’
specification. See, e.g., In re Kahn, 441 F.3d 977, 985-88, 78 USPQ2d
1329, 1334-337 (Fed. Cir. 2006); In re Corkill, 771 F.2d 1496, 1497-1500,
226 USPQ 1005, 1006-008 (Fed. Cir. 1985); Kerkhoven, 626 F.2d at 850,
205 USPQ at 1072, and case cited therein; In re Skoll, 523 F.2d 1392,
1397-398, 187 USPQ 481, 484-85 (CCPA 1975); In re Castner, 518 F.2d
1234, 1238-239, 186 USPQ 213, 217 (CCPA 1975); In re Lintner, 458 F.2d
1013, 1015-016, 173 USPQ 560, 562-63 (CCPA 1972); see also In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-681 (Fed. Cir.
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