Ex parte Dohner

Board of Patent Appeals and Interferences

Jul 15, 1998

07896073 (B.P.A.I. Jul. 15, 1998)

Application for patent filed June 2, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRENT R. DOHNER
__________
Appeal No. 95-2303
Application 07/896,0731
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS, and PAK, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2303
Application 07/896,073
2
This is a decision on an appeal from the final rejection
of claims 1 through 6, 29 through 37, 39, and 40, which are
all of the claims remaining in the application.
The subject matter on appeal relates to a composition
comprising an oil of lubricating viscosity which contains a
friction-reducing amount of an additive comprising a
triglyceride or diglyceride of a specified formula and at
least one metal overbased composition derived from a
hydrocarbyl substituted succinic acid or anhydride of a
specified formula. Further details of this appealed subject
matter are readily apparent from a review of illustrative
independent claims 1 and 36. A copy of these claims taken
from the appellant's Brief is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Sabol 3,567,637 Mar. 2, 1971
Davis 4,663,063 May 5, 1987
Kennedy et al. (Kennedy) 5,144,603 May 19,
1992
Dasai 286,996 Oct. 19, 1988
(published Eur. Pat.
Application)
Appeal No. 95-2303
Application 07/896,073
3
Claims 1 through 6, 29 through 35, 39, and 40 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Davis in view of Dasai.
Claims 36 and 37 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kennedy in view of Sabol.
As properly indicated by the examiner on page 2 of the
Answer, the appealed claims will stand or fall as grouped in
the above noted rejections. Accordingly, we will restrict our
attention to independent claims 1 and 36 which are the only
independent claims on appeal.
Opinion
For the reasons well stated by the examiner in his final
office action and Answer, it would have been obvious for one
with ordinary skill in the art to combine the applied
references in the manner proposed, thereby resulting in
compositions corresponding to those defined by the appellant's
independent claims. The appellant's arguments to the contrary
are unpersuasive because, generally speaking, they are based
upon a misperception by the appellant of the scope and content
Appeal No. 95-2303
Application 07/896,073
4
of the appealed claims and the applied prior art. We refer to
pages 3 through 6 of the Answer for a more specific
explanation of why the appellant's arguments are not
convincing.
We see no useful purpose in further burdening the record
of this application by reiterating the findings of fact,
conclusions of law, and responses to argument expressed by the
examiner in the final office action and Answer. Accordingly,
we hereby adopt these findings, conclusions, and responses as
our own, and concomitantly we hereby sustain the examiner's §
103 rejection of claims 1 through 6, 29 through 35, 39, and 40
as being unpatentable over Davis in view of Dasai and his
rejection of claims 36 and 37 as being unpatentable over
Kennedy in view of Sabol.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 95-2303
Application 07/896,073
5
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
The Lubrizol Corporation
Patent Dept. - Docket Clerk
29400 Lakeland Blvd.
Wickliffe, OH 44092-2298
Appeal No. 95-2303
Application 07/896,073
APPENDIX
Appeal No. 95-2303
Application 07/896,073
1
AP
PE
ND
IX
Appeal No. 95-2303
Application 07/896,073
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2