Ex parte Chamberlin

Board of Patent Appeals and Interferences

Sep 30, 1999

08344043 (B.P.A.I. Sep. 30, 1999)

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(2) is not binding precedent of the Board.
Attorney docket no. 2658R-01.1
Application for patent filed 23 November 1994. According to appellants, the application on appeal is a2
continuation-in-part of application 08/067,780 filed 26 May 1993, now abandoned, which in turn is said to be a
continuation-in-part of application 07/707,724, filed 30 May 1991, also abandoned . Application (Paper 1), p. 1.
Paper No. 17
UNITED STATES BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM B. CHAMBERLIN, III
____________
Appeal No. 97-04551
Application No. 08/344,0432
____________
ON BRIEF
____________
Before SCHAFER, LEE, and TORCZON, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
Applicant seeks review under 35 U.S.C. § 134 of the final rejection of claims 1-41. Notice of
Appeal (Paper 10).
BACKGROUND
The claimed subject matter
The subject matter of the invention involves lubricants suitable for fuel injected
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two-stroke cycle engines and a method of lubricating a particular type of these engines, crankcase-
scavenged two-stroke cycle engines. Such engines were known in the art as of applicant’s effective filing
date. Applicant describes these engines as follows:
Direct fuel-injected crankcase-scavenged two-stroke cycle engines have
been described in some detail on page 37 of the present application. These are
engines in which the lubricant is not pre-mixed with the fuel . . . . The fuel is
injected directly into the combustion chamber, rather than being drawn through the
crankcase. The lubricant and air, on the other hand are drawn into the crankcase
and are pumped or scavenged from there and ultimately pass into the combustion
chamber. There they are compressed, and thereafter the fuel is injected. In the
ordinary two-stroke cycle engine on the other hand, the fuel and lubricant are
premixed, supplied to the crankcase, swept promptly into the combustion
chamber, and consumed.
Response to Request for Additional Information (Paper 16), p. 13:
As set out in the claims, lubricant compositions require three components: (1) an oil of lubricating
viscosity; (2) a piston scuffing preventing or reducing amount of the mixture of a phenol and a dispersant;
and (3) an antioxidant. Bright stock may be included as an optional component in some embodiments. The
lubricant must also be free of ash forming and phosphorous containing components. Applicant’s
specification indicates that the ashless dispersants include Mannich, amine, nitrogen-containing carboxylic,
and ester dispersants. These dispersants may be post treated with boron compounds. Specification
(Paper 1), p. 22, lines 19-25.
Claim 1 limits the phenol to either (1) an aminophenol or (2) the reaction product of a nitrophenol
and an amino compound. The dispersant is limited to Mannich, amine, nitrogen-containing carboxylic, or
ester dispersants. The antioxidant is limited to sulfur-containing organic, nitrogen-containing, or hindered
phenol inhibitors. Bright stock, if present, is limited to no more than 3%. Claim 41 is essentially the same,
limiting phenol to an aminophenol and the antioxidant to an aromatic amine.
Claim 21 is directed to the method of using the lubricant essentially as specified in claim 1 to
lubricate a fuel-injected, crankcase-scavenged two-stroke cycle engine. There are two steps to the
method: (1) supplying the lubricant to the crankcase of the engine and (2) operating the engine. The steps
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themselves are, of course, the conventional steps for lubricating a typical internal combustion engine. The
lubricants specified in claim 21 differ from the lubricants of claim 1 in that there is no limitation placed upon
the amount of bright stock. However, dependent claims 35 and 36 limit the amount of bright stock. Claim
35 limits it to 0 to about 3%. Claim 36 requires that the lubricant be free of bright stock.
Claims 1, 41, 21, 35 and 36 are reproduced below:
1. A lubricant composition suitable for fuel injected two-stroke cycle engines,
comprising:
at least one oil of lubricating viscosity;
an amount, sufficient to reduce or prevent piston scuffing, of a
mixture of
(A) at least one phenol selected from
(A-1) an aminophenol and
(A-2) a reaction product of a nitrophenol and an
amino compound; and
(B) at least one Mannich dispersant, amine
dispersant, nitrogen-containing carboxylic
dispersant, or ester dispersant;
said composition further comprising:
(C) an amount, sufficient to reduce degradation of the
lubricant composition upon exposure to oxygen or to
oxides of nitrogen, of a nitrogen-containing inhibitor, a
hindered phenol inhibitor, or a sulfur-containing organic
inhibitor;
said composition containing 0 to about 3 percent by weight bright
stock;
provided said composition is substantially free from ash-forming
components and from added phosphorus-containing components.
41. A lubricant composition suitable for fuel injected two-stroke cycle engines,
comprising:
at least one oil of lubricating viscosity;
an amount, sufficient to reduce or prevent piston scuffing, of a
mixture of
(A) at least one aminophenol and
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(B) at least one Mannich dispersant, amine dispersant,
nitrogen-containing carboxylic dispersant, or ester dispersant;
said composition further comprising:
(C) an amount, sufficient to reduce degradation of the
lubricant composition upon exposure to oxygen or to
oxides of nitrogen, of an aromatic amine inhibitor;
said composition containing 0 to about 3 percent by weight bright
stock;
provided said composition is substantially free from ash-forming
components and from added phosphorus-containing components.
21. A method of lubricating a direct fuel injected, crankcase-scavenged two-
stroke cycle engine, comprising
(a) supplying to the crankcase of said engine
a composition of at least one oil of lubricating viscosity;
an amount, sufficient to reduce or prevent piston scuffing,
of a mixture of
(A) at least one phenol selected from
(A-1) an aminophenol and
(A-2) a reaction product of a nitrophenol
and an amino compound; and
(B) at least one Mannich dispersant, amine
dispersant, nitrogen-containing carboxylic
dispersant, or ester dispersant;
said composition further comprising:
(C) an amount, sufficient to reduce degradation
of the lubricant composition upon exposure to
oxygen or to oxides of nitrogen, of a nitrogen-
containing inhibitor, a hindered phenol inhibitor,
or a sulfur-containing organic inhibitor; and
(b) operating the engine.
35. The method of claim 21 wherein the lubricating composition contains 0 to
about 3 percent by weight bright stock.
36. The method of claim 21 wherein the lubricating composition is free of
bright stock.
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The rejection
The examiner rejected claims 1-41 under 35 U.S.C. § 103 as unpatentable over the combined
teachings of the following references. Examiner's Answer (Paper 12), p. 3:
Davis (‘757) U.S. Patent 4,231,757 4 November 1980
Davis (‘138) U.S. Patent 4,425,138 10 January 1984
Smalheer, C.V. & Smith, R. Kennedy (Smalheer), Lubricant Additives 1-11 (The Lezius-Hiles Co.
1967).
The References
Davis 4,231,757
Davis 4,231,757 (Davis '757) relates to lubricants. The lubricant compositions are useful, inter
alia, for crankcase lubricants for two-stroke cycle engines. Davis ‘757, 18:51-56. The lubricants include
an oil of lubricating viscosity (Davis ‘757, 18:63 to 20:25) and the reaction product of a nitrophenol and
an amino compound. Davis ‘757, 1:56 to 2:13. The patent further teaches that additional ingredients may
be included in the lubricant:
The invention also contemplates the use of other additives in combination with the
composition of this invention. Such additives include, for example, auxiliary
detergents and dispersants of the ash-producing or ashless type,
oxidation-inhibiting agents, pour point depressing agents, extreme pressure agents,
color stabilizers and anti-foam agents. [Emphasis added.]
Davis ‘757, 20:26-32. More specifically, the patent teaches that the nitrophenol-amino reaction product
may be combined with a Mannich dispersant (Davis ‘757, 22:18-25), amine dispersants (Davis ‘757, 22:7-
13), nitrogen containing carboxylic dispersants (Davis ‘757, 22:7-10) or ester dispersants (Davis ‘757,
21:60-67). Davis '757 also teaches the inclusion of other ashless dispersants including ashless amino,
carboxylic or ester dispersants. Davis ‘757, 21:60 to 22:10. Example B (Davis ‘757, 23:8-23) teaches
an ashless, bright stock free, phosphorus-free lubricating composition made of the following components:
Base Oil 10W-40
Acrylate V.I. Improver
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Borated Succinic Acid/Polyamine Dispersant/Detergent
Sulfurized Hydrocarbon Anti-wear Agent
Phenolic Anti-oxidant
Carboxylic Acid Anti-rust Agent
Product of Example 3
Silicone Anti-foam Agent
The “[p]roduct of Example 3" is the reaction product of a nitrophenol and an amino compound (polyamine).
Davis ‘757, 16:25-45. As can be seen from the above list, the lubricant contains no bright stock and is free
of ash-forming and phosphorous-containing ingredients.
Davis, 4,425,138
Davis, 4,425,138 (Davis ‘138) also relates to a lubricant similar to that disclosed in Davis ‘757.
The lubricant is taught to be useful in two-stroke cycle engines. Davis ‘138, 2:29-38. The patent also
teaches that
[i]n some two-cycle engines the lubricating oil may be injected into the combustion
chamber along with the fuel or into the fuel just prior to the time the fuel enters the
combustion chamber. The two-cycle lubricants of this invention are intended for
use in such two-cycle engines.
Davis ‘138, 18:53-58. The lubricants include an oil of lubricating viscosity (Davis ‘138, 3:1 to 4:19) and
an amino phenol (Davis ‘138, 4:45 to 11:33). The '138 lubricant may also include:
Other additives such as auxiliary detergents and dispersants of the ash-producing
or ashless type, anti-oxidants, coupling agents, pour point depressing agents,
extreme pressure agents, color stabilizers and anti-foam agents . . . . [Emphasis
added.]
Davis ‘138, 17:28-33. Ashless dispersants are specifically recommended for use in two- stroke cycle
engine lubricants. Davis ‘138 teaches:
Detergent-dispersants of ashless types and ash-producing metallic types are used
to control piston ring sticking and promote general engine cleanliness. The heavier
duty two-cycle lubricants require the use of suitable ashless dispersants because
of the proneness of the reference engine to deposit induced preignition. Other
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formulations use calcium, barium or magnesium sulfonates either singly, in
combination with one another, or in combination with ashless dispersants.
Davis ‘138, 17:34-42. Bright stocks may be present in certain embodiments but are not required. Davis
‘138, 18:23-28. Bright stocks, when present, are taught to be present in two-cycle oil in amounts of about
3 to about 20%. Davis ‘138, 18:23-28. Polymeric viscosity improvers are specifically disclosed as
replacements for bright stocks to improve lubrication, lubricant film strength and engine cleanliness. Davis
‘138, 17:45-48.
Smalheer
Smalheer presents a discussion of additives conventionally used in oil based lubricants. The
publication specifically teaches amine, nitrogen-containing, carboxylic ester ashless dispersants (Smalheer,
p. 5) and nitrogen-containing, hindered-phenol and sulfur-containing antioxidants including phenolic amines
(Smalheer, p. 7).
The rejections
The examiner held that the claimed invention differed from the lubricants described in the Davis
patents in two respects: (1) the specific ashless dispersant claimed and (2) the use of a nitrogen containing
hindered phenol or a sulfur-containing antioxidant. The examiner found that Smalheer teaches that ashless
dispersants and antioxidants specified in the claims were conventional lubricant additives. Based upon the
combined disclosures of the references, the examiner concluded that it would have been obvious to use
these conventional additives in the lubricant compositions disclosed in the Davis patents.
Applicant asserts that the examiner has not made out a prima facie case and that any prima facie
case is overcome by the Eisenhauer declaration submitted under 37 CFR § 1.132.
We affirm the examiner’s rejection.
DISCUSSION
Grouping of the claims
Applicant requests independent consideration of four groups of claims. Appeal Brief (Paper 11),
p. 3:
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Group I: claims 1-20
Group II: claim 41
Group III: claims 21-34 and 37-40
Group IV: claims 35 and 36
Pursuant to 37 CFR §1.192(c)(7) we shall decide this appeal on the basis of claims 1, 21, 35, 36 and 41.
Claims 1-20
Claim 1 requires the combination of (A) an oil of lubricating viscosity, (B) a mixture of either an
aminophenol or the reaction product of a nitrophenol and an amino compound with a Mannich, amine,
nitrogen containing carboxylic or ester dispersant, (C) an additive selected from a nitrogen containing,
hindered phenol or a sulfur containing antioxidant. The lubricant may optionally include up to 3% bright
stocks and must be substantially free of ash forming and phosphorous containing components.
Applicant directs our attention to two limitations of claim 1 which are allegedly not taught by the
Davis references. Appeal Brief (Paper 11), p. 3. See 37 CFR § 1.192(c)(8)(iv)(requiring the appeal
brief to identify the specific limitations not taught by the references.)
First, applicant argues that the Davis references do not teach or suggest lubricants containing little
or no bright stock. Claim 1, however, permits up to “about 3%” bright stock. We further note Davis '138
teaches that bright stock may be present in "about 3 to about 20% of the total oil composition." Davis
‘138, 18:23-28. The lower limit of about 3% bright stock taught by Davis ‘138 overlaps applicant’s upper
limit of 3%. In view of this teaching the hypothetical person of ordinary skill in the art would recognize that
about 3% bright stock could be used in the lubricants taught by Davis ‘138. Accordingly, where bright
stock is present, the use of 3% would have been prima facie obvious.
We further note that the Davis patents teach that bright stocks are an optional ingredient and may
be replaced by other viscosity improvers. Thus, Davis ‘138 teaches:
Lubricity agents such as synthetic polymers (e.g., polyisobutene having a
number average molecular weight in the range of about 750 to about 15,000), as
measured by vapor phase osmometry or gel permeation chromatography, polyol
ether (e.g., poly(oxyethylene-oxypropylene)ethers) and ester oils (e.g., the ester
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oils described above) can also be used in the compositions of this invention.
Natural oil fractions such as bright stocks (the relatively viscous products formed
during conventional lubricating oil manufacture from petroleum) can also be used
for this purpose. They are usually present in the two-cycle oil in the amount of
about 3 to about 20% of the total oil composition.
Davis ‘138, 17:67 - 18:28. Davis ‘138 also teaches that
Polymeric VI [(Viscosity Index)] improvers have been and are being used as
bright stock replacement in the hope of improving lubricant film strength and
lubrication and improving engine cleanliness. [Bracketed material added.]
Davis ‘138, 17:45-48. Davis ‘757 gives an example of a lubricant which does not include bright stocks
but uses an acrylate viscosity index improver. Davis ‘757, Example B, 23:8-23. In our view, the person
of ordinary skill in the art would have recognized from the Davis patents that bright stocks are optional
ingredients in the Davis lubricants. As noted by applicant “[a] feature which is optionally present may also
be optionally absent.” Response to Request for Additional Information (Paper 16), p.4.
Applicant argues that Davis ‘138
discloses 2-cycle lubricants. Those materials, however, are disclosed to contain
8 - 12 percent (e.g., 9.4%, col. 19, line 6 ) of the conventional bright stock. Bright
stock in such amounts is excluded from the compositions of the present invention.
There is no teaching in the Davis references that any such compositional limitations
are desirable.
Appeal Brief ( Paper 11), p. 4.
Davis ‘757 and '138 each disclose a lubricant composition in which bright stock may or may not
be present. We also note that the lubricant described in Example B of Davis ‘757 does not include bright
stock. A reference is good for all it teaches to one of ordinary skill in the art, In re Fritch, 972 F.2d 1260,
1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992), and is not limited to the particular invention described
and to be protected by the patent, EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ
20, 25, (Fed. Cir.1985), the specific examples disclosed, In re Fracalossi, 681 F.2d 792, 794 n.1, 215
USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA
1976), or preferred embodiments. In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972).
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Accordingly, we find that Davis ‘757 and '138 teach lubricant compositions that are substantially free of
bright stock.
As the second difference, applicant argues that the Davis patents teach formulations including ash
forming and phosphorous containing materials and, therefore, the person of ordinary skill in the art would
not be lead to a lubricant substantially free of these components. Appeal Brief (Paper 11), p. 4.
Again we note that the Davis patents, while indicating such components may be used, teaches they
are optional components. Davis ‘757 specifically notes that the lubricant additives may contain “auxiliary
detergents and dispersants of the ash-producing or ashless type . . . . “ Davis ‘757, 20:26-30. Davis ‘138
similarly teaches the use of “auxiliary detergents and dispersants of the ash-producing or ashless type . .
. .” Davis ‘138, 17:28-30. Davis ‘138 also specifically recommends the use of ashless dispersants with
two-stroke cycle engines. Thus Davis ‘138 teaches that
heavier duty two-cycle lubricants require the use of suitable ashless dispersants
because of the proneness of the reference engine to deposit induced preignition.
Davis ‘138, 17:36-39. Additionally, we note that Example B of Davis ‘757 is free of ash forming
components. Davis ‘757 at 23:15-23. While applicant asserts that the listed borated succinic
acid/polyamine dispersant is an ash-containing material (Appeal Brief (Paper 11), p. 4), this statement is
not supported by any evidence and we give it little, if any weight. Estee Lauder Inc. v. L'Oreal, S.A., 129
F.3d 588, 593, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997). Indeed, applicant’s assertion is contrary to
the record. Applicant’s specification under the subtitle “(B) Ashless Dispersants” describes various ashless
dispersants and states:
The dispersant includes nitrogen-containing carboxylic dispersants . . . . In one
embodiment, the dispersants may be post-treated with such reagents as . . . boron
compounds . . . .”
Specification (Paper 1), p. 22, lines 20-25. The succinic acid/polyamine dispersant of Example B is a
“nitrogen-containing carboxylic dispersant.” Additionally, Davis ‘757 characterizes “borated alkyl succinic
acid/polyamine dispersant/detergents" as ashless dispersants. Davis ‘757, 21:60 - 22:17, particularly, 22:7-
10. We find that Davis ‘757 and ‘138 teach lubricant compositions which are free of ash forming
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components.
With respect to phosphorous containing components, applicant asserts, without any evidentiary
support, that lubricants “often contain extreme pressure/antiwear agents which are normally phosphorous
containing materials.” Appeal Brief (Paper 11), p. 4-5. We note that Example B of Davis ‘757 does not
list any phosphorous containing ingredients. Davis ‘757, 23:10-23. Smalheer teaches that extreme
pressure additives include
organic compounds that contain one or more elements or functions such as sulfur,
halogen (principally chlorine), phosphorous, carboxyl, or carboxylate salt which
can react chemically with the metal surface under conditions of boundary
lubrication.
Smalheer, p. 9. Smalheer further teaches that extreme pressure additives in motor oils are also known in
the industry as anti-wear and anti-scuffing agents. Smalheer, p. 10. The only anti-wear agent listed in
Example B is a sulfurized hydrocarbon. Davis ‘757, 23:19. In view of these teachings, one having ordinary
skill in having ordinary skill in the art would understand Davis’ Example B to be free of phosphorous
containing components.
In view the combined teachings of the Davis patents and Smalheer, we conclude that the lubricant
compositions of claim 1 would have been prima facie obvious.
Claim 41
Claim 41 is identical to claim 1 except it limits component (A) to an aminophenol and component
(C) to an aromatic amine antioxidant. Davis '138 teaches the use of aminophenol additives . Davis '138,
4:44 to 11:33. And both Davis ‘757 and Davis ‘138 generally teach that antioxidants may be included in
the disclosed lubricant compositions. Davis ‘757 specifically teaches the use of phenolic antioxidant in a
crankcase lubricant. Davis ‘757, Example B, 23:9-23. Smalheer teaches that aromatic amine antioxidants
are conventional lubricant additives . Smalheer, p. 7. One having ordinary skill in the art would have
recognized that such conventional aromatic amine antioxidants would be useful as the antioxidants in the
Davis lubricants. The inclusion of aromatic amines as antioxidants in the Davis lubricants would, therefore,
have been prima facie obvious.
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Claims 21-34 and 37-40
Claim 21 to 40 are directed to a method for lubricating a direct fuel injected, crankcase scavenged
two-stroke cycle engine. Applicant argues that the cited references do not direct one to use the disclosed
compositions for lubrication of a directed fuel injected, crankcase-scavenged two-cycle stroke engine.
Appeal Brief (Paper 11), p.5. As we indicated above, such engines were known in the art. Applicant’s
specification notes that direct fuel injected crankcase-scavenged two-stroke cycle engines are “those in
which the lubricant is not pre-mixed with the fuel.” Specification (Paper 1), p. 37. Davis ‘757 and '138
teach that the disclosed lubricants are useful in two-stroke cycle engines. Davis ‘757, 18:51-56; Davis
‘138, 18:53-58). Davis '138 also teaches
[i]n some two-cycle engines the lubricating oil may be injected into the combustion
chamber along with the fuel or into the fuel just prior to the time the fuel enters the
combustion chamber. The two-cycle lubricants of this invention are intended for
use in such two-cycle engines.
Davis ‘138, 18:53-58. We find that the lack of premixing of lubricant and fuel and the separate
introduction of the fuel and lubricant would suggest the use of the Davis lubricants in direct fuel injected
crankcase-case scavenged two-stroke cycle engines to the person of ordinary skill in the two-stroke cycle
engine arts. The use of the Davis lubricants in this known type of two-cycle engine would have been prima
facie obvious.
Applicant argues that, unlike the claimed lubricants, the two-stroke cycle engine lubricants
disclosed by Davis ‘757 and '138 would be unable to withstand the harsh environment of the crankcase.
Appeal Brief (Paper 11), p. 5. No objective evidence has been provided that supports this position. The
argument of counsel unsupported by evidence in the record is of little weight in deciding patentability. Estee
Lauder, 129 F.3d at 593, 44 USPQ2d at 1615 (Fed. Cir. 1997). In any event, for the reasons stated
above, we hold that the Davis patents suggest the use of ashless lubricants. We note particularly the
teaching in Davis ‘138 that ashless lubricants should be used with “heavier duty two-cycle lubricants” to
avoid “deposit induced preignition.” Davis ‘138, 17:34-42 and Davis ‘757, 23:10-23 (Example B) .
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Claims 35 and 36
Claims 35 and 36 depend from claim 21 and add the limitations that the lubricant contains little (0
to 3%) or no bright stock, respectively. Applicant argues that these limitations further distinguish the
claimed method of lubricating a direct fuel injected, crankcase-scavenged two-stroke cycle engine since
the prior art does not teach such a limitation.
We have already found that the Davis ‘757 and '138 teach lubricants which contain no bright stock.
Davis ‘138 teaches that bright stock may be optionally included amounts of about 3% to about 20%. The
lower limit of about 3% meets the limitation of claim 35. As we indicated above Davis ‘757, Example B,
describes a lubricant which does not contain bright stock. Davis ‘138 also teaches that polymeric viscosity
improvers may be substituted for bright stocks to improve lubrication, lubricant film strength and engine
cleanliness. Davis ‘138, 17:45-48. Again, we read Davis ‘138 as suggesting the use of the disclosed
lubricants in direct fuel injected, crankcase-scavenged two-stroke cycle engine to the person of ordinary
skill in the art. Davis ‘138, 18:53-58. It would have been prima facie obvious to use low bright stock or
bright stock-free lubricants in the two-stroke cycle engines of the type specified in claims 35 and 36.
Secondary Considerations
Applicant argues that the declaration of Karl Eisenhauer (Eisenhauer declaration (Paper 6)) under
37 C.F.R. § 1.132 provides objective evidence of nonobviousness. Eisenhauer is said to be an employee
of Orbital Engine Company (Australia) Pty Ltd. and has been involved in the development of direct fuel
injected, crankcase scavenged, two-stroke cycle engines. Applicant asserts that the declaration shows (1)
unexpected results (unexpectedly improved performance), (2) commercial success, (3) a long felt but
unsolved need, and (4) failure by others. Appeal Brief (Paper 11) , p. 7-8. We must consider such
secondary evidence in evaluating obviousness under 35 U.S.C. § 103. In re Beattie, 974 F.2d 1309,
1313, 24 USPQ2d 1040, 1042-43 (Fed. Cir. 1992).
Unexpected results
An applicant bears the burden of proving unexpectedly good results. In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). When unexpected results are used as evidence of
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non-obviousness, the results must be shown to be unexpected compared with the closest prior art. In re
Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196, (Fed. Cir. 1984). The Eisenhauer declaration fails to provide
a comparison with the closest prior art of record, the Davis patents. The only comparative information
provided by Eishenhauer is the statement that lubricants from four other major lubricant and additive
suppliers were evaluated and only lubricants provided by applicant’s assignee (Lubrizol) were satisfactory.
Eisenhauer declaration (Paper 6), p. 2. The compositions of the lubricants which were said to be evaluated
are not disclosed. Thus, it is not possible for us to evaluate whether a comparison has been made with the
closest prior art. Applicant has failed to meet his burden of proving unexpected results with the closest
prior art.
Commercial Success
It is axiomatic that in order to prove commercial success, there must be some proof of the
commercialization of the invention. "[T]he PTO must rely upon the applicant to provide hard evidence of
commercial success." In re Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996).
Applicant has not met this burden. No evidence has been presented of any commercialization of the
subject matter of the claimed invention. The declaration presents only the speculation that the use of the
lubricants will allow “Orbital technology to progress towards high volume automotive applications.”
Eisenhauer declaration ( Paper 6), p. 3. The declaration provides no evidence that either the claimed
lubricants or the Orbital engines have been commercialized.
Long felt but unsolved need - failure by others
The nature of a problem "which persisted in the art", and the inventor's solution, are factors to be
considered in determining whether the invention would have been obvious to a person of ordinary skill in
that art. Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 935, 15 USPQ2d 1321, 1324 (Fed.
Cir. 1990); In re Rothermel, 278 F.2d 393, 397, 125 USPQ 328, 332 (CCPA 1960). Establishing such
a long felt need requires objective evidence that the invention has provided a long-awaited, widely
accepted, and promptly adopted solution to a problem extant in the art, or that others, had tried but failed
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to solve that problem. In re Mixon, 470 F.2d 1374, 1377, 176 USPQ 296, 299 (CCPA 1973); In re
Allen, 324 F.2d 993, 997, 139 USPQ 492, 495 (CCPA 1963). The Eisenhauer declaration does not
establish the existence of a problem which persisted in the art for a long period without solution. Applicant
argues that “neither Orbital nor four other major lubricant and additive suppliers have been able to supply
a formulation that is satisfactory in simultaneously minimizing exhaust valve fouling and providing acceptable
overall engine lubrication.” Appeal Brief (Paper 11), p. 8. The Eisenhauer declaration does not indicate
that Orbital tried to solve the problems. The declaration indicates only that it worked with Lubrizol to do
so. Nor does the declaration indicate that the “four other major lubricant and additive suppliers” had
attempted to address the specific problems. It indicates only that “candidate lubricants” were examined
and does not state that the candidate lubricants were attempts by the suppliers to address the specific
problems.
In any event, it appears that the lubricants disclosed by the Davis patents, particularly the ashless
lubricants, provide a solution to the problem. Eisenhauer identifies three problems associated with fuel
injected, crankcase scavenged, two-stroke cycle engines: (1) fouling of the exhaust valves; (2) plugging of
catalytic converters; and (3) decomposition of the lubricant. Davis specifically recommends ashless
lubricants in two-stroke cycle engines to avoid deposits. Davis ‘138, 17:34-42.
Lastly, the declaration does not indicate that those allegedly attempting to solve the problem were
aware of the most relevant prior art, the Davis patents. In re Sneed, 710 F.2d 1544, 1549, 218 USPQ
385, 389 (Fed. Cir. 1983).
The Eisenhauer declaration provides insufficient evidence that a long felt but unsolved need existed
in the art that was solved by applicants claimed lubricants.
DECISION
We affirm the examiner's rejection of claims 1-41 under 35 U.S.C. § 103.
No time for taking any subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
Appeal No. 97-0455
Application No. 08/344,043
-16-
AFFIRMED
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
JAMESON LEE ) BOARD OF
Administrative Patent Judge ) PATENT
) APPEALS AND
) INTERFERENCES
RICHARD TORCZON )
Administrative Patent Judge )
cc: David M. Shold
THE LUBRIZOL CORPORATION
PATENT DEPARTMENT-PATENT ADMINISTRATOR
29400 LAKELAND BLVD.
WICKLIFFE OH 44092-2298