Appeal of interference proceeding in which priority was awarded to senior party. The subject matter involved was high molecular weight hydrocarbon-substituted amines and lubricating oil compositions containing the same. The primary function of the amines as lubricant additives is to prevent the deposition of sludge by keeping it dispersed in the lubricating oil. The Patent Office Board of Interferences found a sludge dispersancy test relied upon by the junior party to demonstrate the utility of their compositions inadequate to establish an actual reduction to practice. The board found the test “not sufficient to simulate actual service conditions to such an extent so as to warrant its acceptance by the industry as a standard and acceptable means of evaluation.†Id. at 589. Thus, the board rejected the test as an acceptable standard, noting a lack of correlation between the test and actual service conditions. Id. at 590.
The court began its analysis by finding that “the only utility contemplated for the amines is as ashless dispersants in lubricant compositions†used in internal combustion engines. Id. e court did not accept the junior party’s argument that utility existed in the amines’ ability to simply disperse sludge, because this utility was “not an objective of the junior party’s research.†Id. Having established a potential utility, the court affirmed the board’s finding that an actual utility had not been established, finding laboratory testing to be acceptable for proving utility, and thus a reduction to practice, “only when a relationship is established between the test conditions and the intended functional setting of the invention.†Id. Te court stated that “the invention had not been tested under laboratory test conditions to the extent that utility would be known to those of ordinary skill in the art. Only a potential utility had been established.†Id. at 591.
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