Appeal No. 95-2950
Application No. 07/855,127
references which would have suggested, in the absence of
hindsight, replacing a surfactant of the primary reference to
Rawlinson with some ester succinate of the secondary
references, as proposed by the examiner, to thereby yield a
method and cutting fluid as claimed by the appellants . 5
For the above stated reasons, we also cannot sustain the
examiner's § 103 rejection of claims 66-76 and 85-99 as being
unpatentable over Oasterhout, Rawlinson, Biresaw or Laemmle
alone or in combination with Gutierrez, Dohner, Murphy and
Malito or her § 103 rejection of claims 94-99 as being
unpatentable over these references and further in view of
Lenack.
5In any further prosecution that may occur, the
appellants and the examiner should consider whether the
polyisobutene succinimide emulsifier which preferably has a
molecular weight of from 1000 to 3000 (e.g., see lines 64-66
in column 2) of Rawlinson's cutting fluid would necessarily
and inherently possess at least three tertiary carbon atoms
and thus would necessarily and inherently satisfy the
requirements, such as the bioresistant surfactant feature, of
at least some of the claims on appeal.
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