Ex Parte Wollenberg et al

Board of Patent Appeals and Interferences

Sep 20, 2007

10699507 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT H. WOLLENBERG
and THOMAS J. BALK
__________

Appeal No. 2007-0510
Application No. 10/699,5071
___________

Decided: 20 September 2007
___________

Before FRED E. McKELVEY, Senior Administrative Patent Judge, and
ADRIENE LEPIANE HANLON and MICHAEL P. TIERNEY,
Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF CASE 1
Appellants appeal under 35 U.S.C. § 134 from a final rejection of 2
claims 1-45. We have jurisdiction under 35 U.S.C. § 6(b). 3
Appellants’ invention is directed to a high throughput screening 4
method and system for measuring the storage stability of lubricating oil 5

1 Application 10/699,507 was filed on October 31, 2003. The real party in
interest is Chevron Oronite Company LLC.
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compositions under program control. Claims 1, 20, and 39 are the only 1
independent claims pending in the application. They read as follows: 2
1. A high throughput method for screening 3
lubricating oil additive composition samples, under program 4
control, comprising 5
(a) providing a plurality of different lubricating oil 6
additive composition samples comprising at least one 7
lubricating oil additive, each sample being in a respective one 8
of a plurality of test receptacles; 9
(b) maintaining each sample at a predetermined 10
temperature for a predetermined time; 11
(c) measuring the storage stability of each sample to 12
provide storage stability data for each sample; and, 13
(d) outputting the results of step (c). 14
15
20. A high throughput method for screening 16
lubricating oil composition samples, under program control, 17
comprising: 18
(a) providing a plurality of different lubricating oil 19
composition samples comprising (i) a major amount of at least 20
one base oil of lubricating viscosity and (ii) a minor amount of 21
at least one lubricating oil additive, each sample being in a 22
respective one of a plurality of test receptacles; 23
(b) maintaining each sample at a predetermined 24
temperature for a predetermined time; 25
(c) measuring the storage stability of each sample to 26
provide storage stability data for each sample; and, 27
(d) outputting the results of step (c). 28
29
39. A system for screening lubricant performance, 30
under program control, comprising: 31
a) a plurality of test receptacles, each containing a 32
different lubricating oil composition sample comprising (a) a 33
major amount of at least one base oil of lubricating viscosity 34
and (b) a minor amount of at least one lubricating oil additive; 35
b) receptacle moving means for individually 36
positioning said test receptacles in a testing station for 37
measurement of storage stability in the respective sample; 38
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c) means for measuring the storage stability in the 1
sample moved to the testing station to obtain storage stability 2
data associated with said sample and for transferring said 3
storage stability data to a computer controller, wherein said 4
computer controller is operatively connected to the means for 5
individually moving the test receptacles. 6
7
The Examiner relies on the following evidence in rejecting the claims 8
on appeal: 9
Kolosov et al. (“Kolosov”) 2004/0123650 A1 Jul. 1, 2004 10
O’Rear 2003/0100453 A1 May 29, 2003 11
Tolvanen et al. (“Tolvanen”) US 5,715,046 Feb. 3, 1998 12
Garr et al. (“Garr”) US 5,993,662 Nov. 30, 1999 13
Smrcka et al. (“Smrcka”) EP 1 233 361 A1 Aug. 21, 2002 14
15
B. ISSUES 16
Have the Appellants sustained their burden of showing that the 17
Examiner erred in rejecting claims 39-42 under 35 U.S.C. § 102(e) as being 18
anticipated by Kolosov? 19
Have the Appellants sustained their burden of showing that the 20
Examiner erred in rejecting claims 1-9, 18-29, 38, and 43 under 35 U.S.C. 21
§ 103(a) as being unpatentable over the combination of Kolosov, O’Rear, 22
and Tolvanen? 23
Have the Appellants sustained their burden of showing that the 24
Examiner erred in rejecting claims 10-13, 30-33, 44, and 45 under 35 U.S.C. 25
§ 103(a) as being unpatentable over the combination of Kolosov, O’Rear, 26
Tolvanen, and Garr? 27
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Have the Appellants sustained their burden of showing that the 1
Examiner erred in rejecting claims 14-17 and 34-37 under 35 U.S.C. 2
§ 103(a) as being unpatentable over the combination of Kolosov, O’Rear, 3
Tolvanen, and Smrcka? 4
Have the Appellants sustained their burden of showing that the 5
Examiner erred in provisionally rejecting claims 1-3, 6, 7, 9, 11, 12, 14, 15, 6
19, 20, 22, 23, 26, 27, 29, 31, 32, 34, 35, and 38-45 under the judicially 7
created doctrine of obviousness-type double patenting as being unpatentable 8
over claims 1, 3-9, 15-19, and 24-30 of copending Application 10/779,422? 9
Have the Appellants sustained their burden of showing that the 10
Examiner erred in provisionally rejecting claims 1, 2, 13-18, 20-22, and 33-11
38 under the judicially created doctrine of obviousness-type double 12
patenting as being unpatentable over claims 20 and 22-30 of copending 13
Application 10/699,529? 14
Have the Appellants sustained their burden of showing that the 15
Examiner erred in provisionally rejecting claims 1, 2, 13-17, 20, 22, 34-37, 16
39-42, 44, and 45 under the judicially created doctrine of obviousness-type 17
double patenting as being unpatentable over claims 1, 3, 10-18, 22, and 23 of 18
copending Application 10/699,508? 19
Have the Appellants sustained their burden of showing that the 20
Examiner erred in provisionally rejecting claims 1, 2, 20, 22, 39, 41, and 44 21
under the judicially created doctrine of obviousness-type double patenting as 22
being unpatentable over claims 1, 13, 19-22, and 33-35 of copending 23
Application 10/699,509? 24

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C. FINDINGS OF FACT 1
The following findings of fact are believed to be supported by a 2
preponderance of the evidence. Additional findings of fact as necessary 3
appear in the Analysis portion of the opinion. 4
1. Appellants’ Specification 5
The Appellants’ invention relates generally to methods for high 6
throughput screening of lubricating oil additives and lubricating oil 7
compositions containing such additives. Specification at 1:5-6. 8
Appellants define “high throughput” as meaning that a relatively large 9
number of different lubricating oil additive compositions or lubricating oil 10
compositions can be rapidly prepared and analyzed. Specification at 5:19-11
6:1. 12
The compositions can be analyzed for storage stability such as, e.g., 13
sedimentation data, color data, and viscosity data. Specification at 20:13-16. 14
One test for measuring storage stability includes determining how 15
much light can pass through or be scattered by a sample of the lubricating oil 16
additive composition or lubricating oil composition. Specification at 22:1-3. 17
Alternatively, a viscosity test may be used to determine storage 18
stability. Specification at 24:20-21. 19
The base oil of the lubricating oil compositions of the invention may 20
be any natural or synthetic lubricating base oil. Specification at 11:16-18. 21
The lubricating oil additive compositions of the invention include at 22
least one lubricating oil additive that can be any presently known or later-23
discovered additive used in formulating lubricating oil compositions. 24
Specification at 6:18-21. 25
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The Appellants define “program control” as meaning that the 1
equipment used to provide the plurality of lubricating oil additive 2
compositions or lubricating oil compositions is automated and controlled by 3
a microprocessor or other computer controlled device. Specification at 6:13-4
17. 5
2. Kolosov 6
The invention disclosed in Kolosov relates to high throughput screens 7
for evaluating the rheological properties of a material. Kolosov, para. 8
[0002]. 9
The invention may be used to screen or test flowable materials such as 10
lubricants. Kolosov, para. [0042]. 11
The invention is said to have particular utility in connection with 12
screening a number of different material forms including oils. Kolosov, 13
para. [0043]. 14
The invention can be used to analyze the resulting properties of a 15
particular flowable sample material or the relative or comparative effects 16
that an additive has upon a particular flowable sample material, e.g., the 17
effect of a detergent, a flow modifier, or the like. Kolosov, para. [0043]. 18
Properties that may be measured include viscosity, density, thermal 19
degradation, aging characteristics, relative or absolute component 20
concentration, chemical composition, presence and amounts of other low-21
molecular weight impurities in samples, and agglomeration or assemblage of 22
molecules. Kolosov, para. [0065]. 23
A plurality of samples may be employed in the disclosed screening 24
method. Kolosov, para. [0056]. 25
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The plurality of samples can be a library of samples. Kolosov, para. 1
[0057]. 2
The library of samples can comprise product mixtures that are varied 3
with respect to additives. Kolosov, para. [0061]. 4
In one embodiment of the invention, an array of materials is screened 5
for viscosity. Kolosov, para. [0029]. 6
It is contemplated that a parameter, e.g., a parameter that relates to a 7
rheological property, of a sample is measured at a first time followed by 8
measuring the parameter at a second time and so on during a predetermined 9
period of time. Kolosov, para. [0096]. 10
Figure 1 illustrates a system 10 for measuring or determining material 11
properties, such as viscosity, of a combinatorial library of material samples. 12
Kolosov, para. [0067]. 13
The system 10 includes a stimulus generator 12 that applies power to 14
a probe 14 for applying a stimulus to one or more samples in an array or 15
library of samples. Kolosov, para. [0067]. 16
The system 10 also includes a sensor or transducer 20 for monitoring 17
a response of the one or more samples to the stimulus. Kolosov, para. 18
[0067]. 19
Typically, the transducer 20, the stimulus generator 12, or both are in 20
communication with a computer sub-system 23, such as a microprocessor or 21
other like computer for manipulating data. For example, the computer sub-22
system 23 may be employed to receive and store data such as responses of 23
samples, material properties of samples, or the like. Kolosov, para. [0068]. 24
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The samples may be physically separated from each other, such as in 1
different regions of a substrate or in different sample containers. Kolosov, 2
para. [0056]. 3
Kolosov contemplates that the substrate and sample containers can be 4
used with automated sampling and automated substrate-handling devices. 5
Kolosov, para. [0059]. 6
In one embodiment, the samples may be moved relative to the probe 7
14. Kolosov, para. [0073]. 8
The samples may be moved by an automated system, e.g., a robot 9
arm. Kolosov, para. [0073]. 10
A suitable automated system may be a robotic system that has 11
multiple axis range of motion in the orthogonal x, y, z coordinate axes 12
system. Typically, such an automated system would be part of or in 13
communication with the computer sub-system 23. Kolosov, para. [0074]. 14
3. O’Rear 15
O’Rear discloses a blend of lube base oils which provide improved 16
oxidation stability, both with and without additives. O’Rear, para. [0001]. 17
Finished lubricants used for automobiles, diesel engines, and 18
industrial applications consist of two general components: a lube base oil 19
and additives. O’Rear, para. [0002]. 20
The lube base oil disclosed in O’Rear may be used in a finished 21
lubricant composition and, thus, may contain one or more additives, 22
depending on the particular use of the oil. O’Rear, para. [0046]. 23
O’Rear discloses that the additives are used in amounts which are 24
known to those of skill in the art, preferably about 0.1 to about 40 weight 25
percent of the final lube oil product. O’Rear, para. [0046]. 26
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O’Rear also discloses that a convenient way to measure the stability 1
of lube base oils is using the Oxidator Test. There are two forms of the test: 2
Oxidator BN and Oxidator A. O’Rear, para. [0031]. 3
The Oxidator A test is a measure of oxidation stability during 4
shipping and storage. O’Rear, para. [0031]. 5
Another method for studying the stability of lube base oils during 6
storage is to monitor floc and sediment formation when stored in an oven 7
while exposed to air. O’Rear, para. [0034]. 8
According to the method disclosed in O’Rear, 50 grams of lube base 9
oil is placed in a loosely capped 7 ounce bottle and placed in an oven at 10
150°F. The sample is inspected periodically for an increase in color or 11
formation of floc or sediments. The test is run for 90 days. O’Rear, para. 12
[0034]. 13
4. Tolvanen 14
The invention disclosed in Tolvanen relates to a method and device 15
for determining the stability or storability of oil. Tolvanen at 1:6-7. 16
The invention is based on the finding that the stability of oils can be 17
determined promptly and reliably by measuring the intensity of light 18
scattering from the oil surface. Tolvanen at 2:1-4. 19
The method may be used to measure the contents of substances 20
insoluble in heavy oil fractions derived from petroleum or in their mixtures. 21
Tolvanen at 3:17-19. 22
Figure 1 illustrates a measuring device 10. The device comprises a 23
light source 11, a sample vessel 12, and an indicator 14. Tolvanen at 2:54-24
56. 25
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According to the method disclosed in Tolvanen, light is directed onto 1
the oil product surface and onto the oil layer under the surface whereby the 2
intensity of light scattered from the oil product surface and from inside the 3
oil product will indicate the content of particles in the oil. Tolvanen at 3:20-4
24. 5
An analyzer functioning with the method can be fully automated for 6
sampling and result computing. Tolvanen at 2:33-35. 7
5. Garr 8
Garr discloses a method for producing a large chemical library of 9
purified products from a chemical library of raw reaction products. Garr at 10
1:7-15. 11
In accordance with the invention, reaction tubes, each containing a 12
reaction product, are arranged in an array. Each reaction tube and product is 13
identified by a unique code, such as a bar code, which is optically readable. 14
Garr at 4:3-9. 15
The code is stored in the memory of a digital signal processor on a 16
database. Garr at 4:9-10. 17
The code is used to relate each pure chemical compound to the 18
original reaction product from which it is derived. Garr at 3:26-32. 19
6. Smrcka 20
Smrcka discloses a system and method for new product development, 21
especially for new or customized chemical products. Smrcka, para. [0004]. 22
The method includes testing the product and storing details and results 23
of the testing in a computer readable database. Smrcka, para. [0011]. 24
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The database is available globally from any personal computer having 1
suitable client software installed and suitable network connectivity. Smrcka, 2
para. [0038]. 3
D. PRINCIPLES OF LAW 4
“A claim is anticipated only if each and every element as set forth in 5
the claim is found, either expressly or inherently described, in a single prior 6
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 7
2 USPQ2d 1051, 1053 (Fed. Cir. 1987). 8
To establish inherency, the extrinsic evidence “must make clear that 9
the missing descriptive matter is necessarily present in the thing described in 10
the reference, and that it would be so recognized by persons of ordinary 11
skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 12
USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be 13
established by probabilities or possibilities. The mere fact that a certain 14
thing may result from a given set of circumstances is not sufficient.” Id. at 15
1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 16
USPQ 323, 326 (CCPA 1981)). 17
Additionally, a claimed invention is not patentable if the subject 18
matter of the claimed invention would have been obvious to a person having 19
ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 20
127 S. Ct. 1727, 82 USPQ2d 1385 (2007); Graham v. John Deere Co., 383 21
U.S. 1 (1966). 22
Facts relevant to a determination of obviousness include (1) the scope 23
and content of the prior art, (2) any differences between the claimed 24
invention and the prior art, (3) the level of skill in the art, and (4) any 25
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relevant objective evidence of obviousness or non-obviousness. KSR, 127 S. 1
Ct. at 1734, 82 USPQ2d at 1389, Graham, 383 U.S. at 17-18. 2
The question under 35 U.S.C. § 103 is not merely what the references 3
teach but what they would have suggested to one of ordinary skill in the art 4
at the time the invention was made. All disclosures of the prior art, 5
including unpreferred embodiments, must be considered. In re Lamberti, 6
545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976). 7
One of ordinary skill in the art is presumed to have skills apart from 8
what the prior art references expressly disclose. See In re Sovish, 769 F.2d 9
738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill is 10
also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at 11
1742, 82 USPQ2d at 1397. 12
A rejection premised upon a proper combination of references cannot 13
be overcome by attacking the references individually. In re Keller, 642 F.2d 14
413, 426, 208 USPQ 871, 882 (CCPA 1981). 15
E. ANALYSIS 16
1. Claims 39-42 17
Claim 39 recites: 18
A system for screening lubricant performance, under 19
program control, comprising: 20
a) a plurality of test receptacles, each containing a different 21
lubricating oil composition sample comprising (a) a major 22
amount of at least one base oil of lubricating viscosity and (b) a 23
minor amount of at least one lubricating oil additive . . . . 24
25
The Examiner found that compounds analyzed by the system 26
disclosed in Kolosov can be lubricants having an additive therein. The 27
Examiner found that “[i]t is inherent that in a lubricant composition having 28
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an additive therein that the base lubricant oil is present in a major amount 1
while the additive is present in a lesser minor amount.” Final Office Action 2
mailed November 4, 2005 at 12. 3
In the Answer, the Examiner further finds that an additive, by 4
definition, means any substance incorporated into a base material, usually in 5
a low concentration, to perform a specific function, i.e., a stabilizer, a 6
preservative, dispersing agent, antioxidant, etc. The Examiner cites The 7
Condensed Chemical Dictionary 20 (10th ed. 1981) for support. The 8
Examiner finds that one embodiment in Kolosov discloses a lubricant 9
containing an additive. Apparently combining the teachings of Kolosov and 10
the definition of “additive” in The Condensed Chemical Dictionary, the 11
Examiner finds that an additive would be incorporated into the lubricant of 12
Kolosov in a low concentration. Answer at 10-11. 13
The Appellants argue that lubricating oil compositions do not have to 14
contain a major amount of at least one base oil of lubricating viscosity and a 15
minor amount of at least one lubricating oil additive. The Appellants argue 16
that a lubricating oil composition can be a concentrate that contains a major 17
amount of a lubricating oil additive and a minor amount of base oil of 18
lubricating viscosity as a diluent for the concentrate.2 Appeal Brief at 7.19
The Examiner has not directed us to any disclosure in Kolosov that 20
expressly describes a lubricant comprising a minor amount of at least one 21
lubricating oil additive. As for inherency, the Examiner has not 22

2 In the Reply Brief, the Appellants rely on Chemistry and Technology of
Lubricants 88 (R.M. Mortier & S.T. Orszulik, eds., 2nd ed. 1997)
(disclosing that certain dispersants are generally processed as 40 to 60%
concentrates in base oil). Reply Brief at 2. A reply brief shall not include
any new evidence. 37 C.F.R. § 41.41(a)(2) (2006).

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demonstrated that the lubricants disclosed in Kolosov necessarily contain a 1
minor amount of an additive. The definition of “additive” relied on by the 2
Examiner merely establishes that an additive is usually incorporated into a 3
base material in a low concentration. This definition does not establish that 4
an additive is necessarily or inevitably present in a base material in a low 5
concentration. 6
For the reasons set forth above, Kolosov does not anticipate the 7
subject matter of claim 39. 8
Claims 40-42 depend from claim 39. Therefore, claims 40-42 fall 9
with claim 39. See 37 C.F.R. § 1.75(c) (2006) (“Claims in dependent form 10
shall be construed to include all the limitations of the claim incorporated by 11
reference into the dependent claim.”). 12
2. Claim 43 13
Claim 43 depends from claim 39 and recites that the testing station 14
includes a light source and a photocell aligned with the light source. 15
The Examiner finds that the high throughput system disclosed in 16
Kolosov can be used to screen flowable materials, such as lubricants and 17
oils. The Examiner finds that the system can be used to analyze the relative 18
or comparative effects that an additive has upon a particular flowable 19
material. The Examiner finds that the disclosed flowable materials can be 20
screened for various properties including viscosity, density, thermal 21
degradation, aging characteristics, chemical composition, and agglomeration 22
or sedimentation. Answer at 3-4. 23
The Examiner finds that Kolosov does not teach that the disclosed 24
lubricants can be screened for storage stability by optically measuring the 25
formation of sediment in each sample. However, the Examiner finds that 26
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Tolvanen discloses a system that determines the stability of lubricating oil 1
compositions by measuring the intensity of light scattering from the oil 2
surface. Answer at 7. 3
The Appellants argue that Kolosov and Tolvanen do not disclose or 4
suggest a system for screening lubricating oil compositions comprising (a) a 5
major amount of at least one base oil of lubricating viscosity and (b) a minor 6
amount of at least one lubricating additive. The Appellants also argue that 7
Tolvanen does not disclose or suggest a testing station that includes a light 8
source and a photocell aligned with the light source for measuring storage 9
stability in a lubricating oil sample. Appeal Brief at 22-24. 10
Tolvanen discloses a device that determines the stability or storability 11
of oil by measuring the intensity of light scattering from the oil surface. The 12
measuring device comprises a light source 11, a sample vessel 12 containing 13
an oil sample, and an indicator 14. In operation, a light ray 16 is directed at 14
any angle from the light source 11 onto the surface of the oil in sample 15
vessel 12. Part of the arriving light ray 16 is scattered as a light ray 18 from 16
the oil surface and is detected by indicator 14 at any angle. Tolvanen, 2:52-17
63; Figure 1. The Examiner finds that indicator 14 is a photocell and is 18
“aligned” with the light source 11. Answer at 14-15. An automated 19
analyzer for sampling and result comparing can also be employed. 20
Tolvanen, 2:33-37. 21
Significantly, the Appellants have failed to explain why the light 22
source 11 and indicator/photocell 14 are not “aligned” in the Tolvanen 23
device. Furthermore, it is of no moment that Tolvanen does not disclose that 24
the oil compositions tested comprise a major amount of a base oil of 25
lubricating viscosity and a minor amount of a lubricating additive. Based on 26
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the record before us, it is reasonable to find that the lubricant compositions 1
disclosed in Kolosov include lubricant compositions containing an additive. 2
Kolosov does not expressly disclose that the lubricant compositions 3
comprise a major amount of at least one base oil of lubricating viscosity and 4
a minor amount of at least one lubricating oil additive. However, the record 5
before us establishes that one of ordinary skill in the art would have 6
understood “additive” to mean any substance incorporated into a base 7
material, usually in a low concentration. See The Condensed Chemical 8
Dictionary at 20; see also O’Rear, paras. [0002] and [0046]. We find that 9
one of ordinary skill in the art would have reasonably expected the lubricant 10
compositions in Kolosov, comprising a lubricant and an additive, to have a 11
major amount of a base oil and a minor amount of an additive. 12
The Appellants also argue that Tolvanen does not disclose or suggest 13
a system for screening oil samples by maintaining the sample at a 14
predetermined temperature for a predetermined time. Appeal Brief at 24. 15
The Appellants’ argument is not persuasive because claim 43 does not 16
require a sample to be maintained at a predetermined temperature for a 17
predetermined time. Compare claims 1 and 20. 18
Finally, the Appellants argue that the Examiner has failed to establish 19
that Tolvanen provides a “teaching, motivation, or suggestion” for 20
modifying Kolosov to arrive at the claimed invention. Appeal Brief at 26. 21
Kolosov discloses a high throughput system for measuring numerous 22
properties of lubricant compositions, including viscosity, thermal 23
degradation, aging characteristics, and agglomeration or assemblage of 24
molecules. We find that one of ordinary skill in the art would have found 25
these properties useful in determining the storage stability of lubricant 26
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compositions. Tolvanen also discloses a system for measuring the storage 1
stability of oil samples. Based on the record before us, we find that it would 2
have been reasonable for one of ordinary skill in the art to employ the 3
system disclosed in Tolvanen as an alternative means for measuring the 4
storage stability of lubricant compositions in Kolosov. In re Fout, 675 F.2d 5
297, 301, 213 USPQ 532, 536 (CCPA 1982) (“Express suggestion to 6
substitute one equivalent for another need not be present to render such 7
substitution obvious.”). 8
For the reasons set forth above, it is reasonable to conclude that the 9
invention of claim 43 would have been obvious to one of ordinary skill in 10
the art in view of the combined teachings of at least Kolosov and Tolvanen. 11
3. Claims 1-9, 18, and 19 12
The Examiner finds that Kolosov does not teach that the disclosed 13
lubricants can be screened for storage stability by optically measuring 14
sediment formation in each sample. The Examiner finds that O’Rear and 15
Tolvanen optically measure the formation of sediment to determine the 16
storage stability of oils. Answer at 7. 17
Claim 1 is not limited to measuring storage stability by measuring the 18
formation of sediment. Therefore, it is not necessary to consider the 19
teachings of O’Rear and Tolvanen in connection with the step of measuring 20
storage stability recited in claim 1. 21
The Appellants argue that Kolosov does not disclose or suggest the 22
invention of claim 1. Specifically, the Appellants argue that Kolosov merely 23
discloses that the invention may be used to screen most any flowable 24
material, such as pharmaceuticals, coatings, cosmetics, adhesives, inks, 25
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foods, crop agents, detergents, protective agents, lubricants, and the like. 1
Appeal Brief at 11. 2
Significantly, Kolosov discloses that the invention can be used to 3
screen lubricants. Kolosov, para. [0042]. Kolosov also discloses that the 4
invention can be used to analyze the relative or comparative effects that an 5
additive has upon a particular flowable material, e.g., the effect of a 6
detergent, a flow modifier, or the like. Kolosov, para. [0043]. 7
Based on these teachings, we find that Kolosov would have 8
reasonably suggested to one of ordinary skill in the art that the disclosed 9
method is useful for testing lubricants containing an additive. For this 10
reason, it is reasonable to conclude that the method of claim 1 would have 11
been obvious to one of ordinary skill in the art in view of the teachings of 12
Kolosov. 13
4. Claims 20-29 and 38 14
The Examiner finds that Kolosov does not teach that the disclosed 15
lubricants can be screened for storage stability by optically measuring 16
sediment formation in each sample. The Examiner finds that O’Rear and 17
Tolvanen optically measure the formation of sediment to determine the 18
storage stability of oils. Answer at 7. 19
Claim 20 is not limited to measuring storage stability by measuring 20
the formation of sediment. Therefore, it is not necessary to consider the 21
teachings of O’Rear and Tolvanen in connection with the step of measuring 22
storage stability recited in claim 20. 23
The Appellants argue that Kolosov does not disclose or suggest the 24
invention of claim 20. Specifically, the Appellants argue that Kolosov does 25
not disclose or suggest a high throughput method for screening lubricating 26
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oil compositions comprising measuring the storage stability of each sample 1
to provide storage stability data for each sample. The Appellants also argue 2
that Kolosov does not disclose or suggest the step of providing a plurality of 3
different lubricating oil composition samples comprising (i) a major amount 4
of at least one base oil of lubricating viscosity and (ii) a minor amount of at 5
least one lubricating oil additive, each sample being in a respective one of a 6
plurality of test receptacles. Brief at 16. 7
The Appellants’ arguments are not persuasive. Kolosov discloses a 8
high throughput method for screening many flowable materials such as 9
lubricants. Kolosov, para. [0042]. Kolosov discloses that the high 10
throughput method can be used to analyze the resulting properties of a 11
particular flowable material or the relative or comparative effects that an 12
additive has upon a particular flowable material, e.g., the effect of a 13
detergent, a flow modifier, or the like. Kolosov, para. [0043]. Based on 14
these teachings, we find that Kolosov would have reasonably suggested a 15
high throughput method for testing lubricants containing an additive. 16
Kolosov does not expressly disclose that the lubricants comprise a 17
major amount of at least one base oil of lubricating viscosity and a minor 18
amount of at least one lubricating oil additive. However, the record before 19
us establishes that one of ordinary skill in the art would have understood 20
“additive” to mean any substance incorporated into a base material, usually 21
in a low concentration. See The Condensed Chemical Dictionary at 20; see 22
also O’Rear, paras. [0002] and [0046]. We find that one of ordinary skill in 23
the art would have reasonably expected the lubricant compositions in 24
Kolosov, comprising a lubricant and an additive, to have a major amount of 25
a base oil and a minor amount of an additive. 26
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Finally, Kolosov discloses that the high throughput method can be 1
used to measure a number of properties, including viscosity, thermal 2
degradation, aging characteristics, and agglomeration or assemblage of 3
molecules. Kolosov, para. [0065]. We find that one of ordinary skill in the 4
art would have found these properties useful in determining the storage 5
stability of lubricant compositions. 6
For the reasons set forth above, it is reasonable to conclude that the 7
method of claim 20 would have been obvious to one of ordinary skill in the 8
art in view of the teachings of at least Kolosov. 9
5. Claims 10-13, 30-33, 44, and 45 10
Claim 10 depends from claim 1 and requires each sample to have 11
affixed thereto a bar code identifying the sample. 12
The Examiner finds that the containers holding lubricant samples in 13
Kolosov do not have a bar code attached thereto. The Examiner finds that 14
Garr teaches that it is common in a combinatorial library to identify 15
individual containers by a unique code, such as a bar code, which is optically 16
readable. The Examiner finds that the code can be stored in the memory of a 17
digital signal processor on a database. Final Office Action mailed 18
November 4, 2005 at 10; Answer at 8. 19
The Examiner concludes that the invention of claim 10 would have 20
been obvious to one of ordinary skill in the art in view of the combined 21
teachings of at least Kolosov and Garr. Final Office Action mailed 22
November 4, 2005 at 10; Answer at 8. 23
The Appellants do not challenge the Examiner’s findings or the 24
Examiner’s conclusion of obviousness as to claim 10 in the Appeal Brief. 25
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Rather, the Appellants argue that Garr does not cure the deficiencies of 1
Kolosov, O’Rear, and Tolvanen as to claim 1. Appeal Brief at 27-29. 2
For the reasons set forth above, the teachings of Kolosov render 3
obvious the subject matter of claim 1. Therefore, there are no deficiencies 4
that Garr must cure. 5
6. Claims 14-17 and 34-37 6
Claim 14 depends from claim 1 and requires that the step of 7
outputting comprise storing the result of step (c) on a data carrier. 8
The Examiner finds that Smrcka teaches a method of testing a new 9
chemical product and storing the results in a data carrier such as a computer 10
readable medium. Final Office Action mailed November 4, 2005 at 11; 11
Answer at 9. We also find that Kolosov stores data such as responses of 12
samples, material properties of samples, or the like on a computer sub-13
system 23. Kolosov, para. [0068]. 14
The Examiner concludes that the invention of claim 14 would have 15
been obvious to one of ordinary skill in the art in view of the combined 16
teachings of at least Kolosov and Smrcka. Final Office Action mailed 17
November 4, 2005 at 11; Answer at 9. 18
The Appellants do not challenge the Examiner’s findings or the 19
Examiner’s conclusion of obviousness as to claim 14 in the Appeal Brief. 20
Rather, the Appellants argue that Smrcka does not cure the deficiencies of 21
Kolosov, O’Rear, and Tolvanen as to claim 1. Appeal Brief at 29-30. 22
For the reasons set forth above, the teachings of Kolosov render 23
obvious the subject matter of claim 1. Therefore, there are no deficiencies 24
that Smrcka must cure. 25
7. Double patenting rejections 26
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The Appellants do not challenge the double patenting rejections on 1
appeal. Rather, the Appellants state, “Upon resolution of all outstanding 2
issues remaining in this application, Appellants will submit a Terminal 3
Disclaimer to obviate the provisional rejections.” Appeal Brief at 31. 4
F. OTHER ISSUES 5
Based on the record before us, we find that the definition of “additive” 6
relied on by the Examiner and the teachings in O’Rear (paras. [0002] and 7
[0046]) suggest that lubricants comprising a minor amount of an additive 8
would have been known to one of ordinary skill in the art at the time the 9
Appellants’ application was filed. In the event of further prosecution, the 10
Examiner should consider the obviousness of a lubricating oil composition 11
comprising a major amount of at least one base oil of lubricating viscosity 12
and a minor amount of at least one lubricating oil additive as recited in 13
claim 39. Nothing in our opinion should be construed as precluding a 14
rejection under 35 U.S.C. § 103(a) of claims 39-42. In fact, it would appear 15
that such a rejection would be entirely appropriate. 16
G. CONCLUSIONS OF LAW 17
The Appellants have sustained their burden of showing that the 18
Examiner erred in rejecting claims 39-42 under 35 U.S.C. § 102(e) as being 19
anticipated by Kolosov. 20
The Appellants have not sustained their burden of showing that the 21
Examiner erred in rejecting claims 1-9, 18-29, 38, and 43 under 35 U.S.C. § 22
103(a) as being unpatentable over the combination of Kolosov, O’Rear, and 23
Tolvanen. 24
The Appellants have not sustained their burden of showing that the 25
Examiner erred in rejecting claims 10-13, 30-33, 44, and 45 under 35 U.S.C. 26
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23
§ 103(a) as being unpatentable over the combination of Kolosov, O’Rear, 1
Tolvanen, and Garr. 2
The Appellants have not sustained their burden of showing that the 3
Examiner erred in rejecting claims 14-17 and 34-37 under 35 U.S.C. § 4
103(a) as being unpatentable over the combination of Kolosov, O’Rear, 5
Tolvanen, and Smrcka. 6
The Appellants have not sustained their burden of showing that the 7
Examiner erred in provisionally rejecting claims 1-3, 6, 7, 9, 11, 12, 14, 15, 8
19, 20, 22, 23, 26, 27, 29, 31, 32, 34, 35, and 38-45 under the judicially 9
created doctrine of obviousness-type double patenting as being unpatentable 10
over claims 1, 3-9, 15-19, and 24-30 of copending Application 10/779,422. 11
The Appellants have not sustained their burden of showing that the 12
Examiner erred in provisionally rejecting claims 1, 2, 13-18, 20-22, and 33-13
38 under the judicially created doctrine of obviousness-type double 14
patenting as being unpatentable over claims 20 and 22-30 of copending 15
Application 10/699,529. 16
The Appellants have not sustained their burden of showing that the 17
Examiner erred in provisionally rejecting claims 1, 2, 13-17, 20, 22, 34-37, 18
39-42, 44, and 45 under the judicially created doctrine of obviousness-type 19
double patenting as being unpatentable over claims 1, 3, 10-18, 22, and 23 of 20
copending Application 10/699,508. 21
The Appellants have not sustained their burden of showing that the 22
Examiner erred in provisionally rejecting claims 1, 2, 20, 22, 39, 41, and 44 23
under the judicially created doctrine of obviousness-type double patenting as 24
being unpatentable over claims 1, 13, 19-22, and 33-35 of copending 25
Application 10/699,509. 26
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H. DECISION 1
The rejection of 39-42 under 35 U.S.C. § 102(e) as being anticipated 2
by Kolosov is reversed. 3
The rejection of claims 1-9, 18-29, 38, and 43 under 35 U.S.C. 4
§ 103(a) as being unpatentable over the combination of Kolosov, O’Rear, 5
and Tolvanen is affirmed. 6
The rejection of claims 10-13, 30-33, 44, and 45 under 35 U.S.C. 7
§ 103(a) as being unpatentable over the combination of Kolosov, O’Rear, 8
Tolvanen, and Garr is affirmed. 9
The rejection of claims 14-17 and 34-37 under 35 U.S.C. § 103(a) as 10
being unpatentable over the combination of Kolosov, O’Rear, Tolvanen, and 11
Smrcka is affirmed. 12
The provisional rejection of claims 1-3, 6, 7, 9, 11, 12, 14, 15, 19, 20, 13
22, 23, 26, 27, 29, 31, 32, 34, 35, and 38-45 under the judicially created 14
doctrine of obviousness-type double patenting as being unpatentable over 15
claims 1, 3-9, 15-19, and 24-30 of copending Application 10/779,422 is 16
affirmed. 17
The provisional rejection of claims 1, 2, 13-18, 20-22, and 33-38 18
under the judicially created doctrine of obviousness-type double patenting as 19
being unpatentable over claims 20 and 22-30 of copending Application 20
10/699,529 is affirmed. 21
The provisional rejection of claims 1, 2, 13-17, 20, 22, 34-37, 39-42, 22
44, and 45 under the judicially created doctrine of obviousness-type double 23
patenting as being unpatentable over claims 1, 3, 10-18, 22, and 23 of 24
copending Application 10/699,508 is affirmed. 25
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The provisional rejection of claims 1, 2, 20, 22, 39, 41, and 44 under 1
the judicially created doctrine of obviousness-type double patenting as being 2
unpatentable over claims 1, 13, 19-22, and 33-35 of copending Application 3
10/699,509 is affirmed. 4
No time period for taking any subsequent action in connection with 5
this appeal may be extended under 37 C.F.R. § 1.136(a). 6
7
AFFIRMED-IN-PART 8

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Michael E. Carmen, Esq.
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170 Old Country Road
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Mineola, NY 11051