Appeal No. 95-4081
Application 08/071,895
additives falling within the scope of paragraphs (i) and (ii)
of claim 26 are known additives for lubricating oils.
On this record, the subject matter of claim 26 would have
been obvious to a person having ordinary skill in the art.
Accordingly, the examiner's rejection of claim 26 is affirmed.
Since claims 2-9, 11-19, 22-23, 27-30 and 35 stand or fall
with claim 26, the examiner's rejection of those claims is
likewise affirmed.
2. Claims 20 and 25
Applicants maintain that claims 20 and 25 are separately
patentable because "Braid does not teach or suggest gear oils"
(Appeal Brief, page 6). However, Braid does teach lubricating
oils in general and Burjes tells us that one kind of
lubricating oil is gear oil (col. 2, lines 53-60). In fact,
Burjes sets out to solve problems which are said to have
existed with gear oils.
On this record, we believe one skilled in the art would
have found it obvious to use the additives of Burjes and Braid
in gear oils. It is true, as applicants state (Appeal Brief,
page 6), that Braid describes tests of his borate in a Bearing
Corrosion Engine Test. It is also true, however, that Braid
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