Appeal No. 96-0306
Application No. 07/709,369
by the appellant. Rather, White's composition and method relate
to lubricants for use in drawing sheet metal, and Jordan's
composition and method relate to industrial or automotive gear
lubrication. Similarly, White and Jordan contain no teachings or
suggestions of employing polyols for increasing dynamic and/or
static coefficients of friction in accordance with the appealed
claims. Instead, the polyols of White are used for controlling
viscosity and soap-solubility whereas those of Jordan are for
increasing extreme pressure properties.
In this regard, the examiner argues that the appealed claim
recitation concerning "[t}he use as an automatic transmission
fluid, wet brake fluid, or friction-dependent lubricant is merely
intended use and is not a positive limitation of the claims"
(answer, page 5). We cannot agree. As correctly indicated by
the appellant, the claim recitation is not "merely intended use"
but instead is a limitation which further defines the
compositions in question. In order to carry his burden, the
examiner would have to show that the metal-drawing lubricants of
White and the extreme pressure lubricants of Jordan are at least
capable of being used as an automatic transmission fluid or a wet
brake fluid or a friction-dependent lubricant, and this the
examiner has not done. Thus, the mere fact that the primary
reference compositions include a polyol like the here claimed
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