Appeal No. 95-4081
Application 08/071,895
establish that the particular combination of additives called
for by claim 26 produces any unexpected result.
Applicants maintain (Appeal Brief, page 5) that there is
no "motivation" or "teaching" which would lead one having
ordinary skill in the art to use the borates of Braid in the
Burjes lubricating compositions or use the sulfurized
compounds of Burjes in the Braid lubricating compositions. We
disagree.
We have found no reason to doubt the objective truth of the
statements made in both Braid and Burjes, the latter of which
is assigned to the assignee of the application on appeal. The
teachings, taken as a whole, provide the necessary suggestion
or motivation. In this connection, we note that there is
binding precedent which holds that "the test of obviousness is
not express suggestion of the claimed invention in any or all
of the references but rather what the references taken
collectively would suggest to those of ordinary skill in the
art presumed to be familiar with them." In re Rosselet, 347
F.2d 847, 851, 146 USPQ 183, 186 (CCPA 1965). See also In re
Keller, 642 F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981). The
references relied upon by the examiner demonstrate that
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