Ex Parte Tiffany et al

Board of Patent Appeals and Interferences

Oct 16, 2001

08807210 (B.P.A.I. Oct. 16, 2001)

1
The opinion in support of the decision being entered today was not written for
publication and is not precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE MORTIMER TIFFANY, III, GEORGE CONRAD L’HEUREUX and
JOHN HENRY SMYTHE
____________
Appeal No. 1999-0543
Application No. 08/807,210
____________
ON BRIEF
____________
Before GARRIS, WALTZ and PAWLIKOWSKI, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to a request, filed September 27, 2001,
for a rehearing of our decision, mailed August 31, 2001, wherein
we affirmed the examiner’s section 103 rejection of all appealed
claims as being unpatentable over the Japanese reference in view
of Miyaji.
In this request, the appellants reiterate their argument
that Miyaji teaches away from using lubricating or mineral oil in
compositions for two-cycle engines pursuant to the here claimed
invention and accordingly that the examiner’s rejection is
Appeal No. 1999-0543
Application No. 08/807,210
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improper. Specifically on page 3 of the subject request, the
appellants urge that “the claims cannot stand rejected on the
basis of the Japanese reference in combination with Miyaji in
that Miyaji cannot be used to support the reference since it
clearly teaches in a direction contrary to that achieved in
accordance with appellants’ invention and this contrary teaching
must be given consideration”.
We have again carefully evaluated the appellants’ above
noted position giving full consideration to the applied reference
teachings including the particular teachings referred to by the
appellants in their request. In this regard, we recognize the
appellants point out that Miyaji associates cleanliness problems
with the presence of mineral oil in lubricating oil compositions
for two-cycle engines (see lines 28-33, in column 1). As
indicated in our above noted decision, however, Miyaji expressly
discloses using at least some amount of mineral oil in his
lubricating oil composition (see the paragraph bridging columns 3
and 4) and therefore plainly does not teach away from the use of
any and all amounts of mineral oil in compositions of the type
under consideration. Further, as also indicated in our decision,
it is significant that the Japanese reference expressly teaches
the effectiveness of a two-cycle engine oil composition which
Appeal No. 1999-0543
Application No. 08/807,210
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contains, for example, 40% by weight of mineral oil (see the
first full paragraph of translation page 3).
For these reasons and those expressed on page 5 of our
decision, we remain convinced that the combined teachings of the
applied references would have suggested a composition of the type
here claimed which includes, for example, 40% by weight of a
lubricating oil (i.e., mineral oil). In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981) (the test for obviousness is
what the combined teachings of the references would have
suggested to those of ordinary skill in the art).
In addition to the foregoing, it is appropriate to emphasize
that the appellants have not contested in the subject request our
determination on page 6 of the forenoted decision that the
Japanese reference by itself is adequate to establish a prima
facie case of obviousness based on the rationale of In re
Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Appeal No. 1999-0543
Application No. 08/807,210
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For the above stated reasons, the appellants’ request is
granted to the extent that we have reconsidered our decision but
is denied with respect to making any changes therein.
DENIED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
Appeal No. 1999-0543
Application No. 08/807,210
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Exxon Chemical Company
Law Technology Department
P. O. Box 710
Linden, NJ 07036