Appeal No. 96-0011 Page 8
Application No. 07/993,896
39. Based upon the above considerations we concur with the
examiner that it would have been prima facie obvious for one of
ordinary skill in the art to select the aromatic dicarboxylic
acid esters of either McGrath or Pine as suitable synthetic
oils in the lubricating grease composition of Ehrlich, as
Ehrlich’s synthetic oils are merely exemplary of those which
may be used, and Ehrlich invites the use of other synthetic
lubricants.
We further conclude that the prior art would have
suggested to those of ordinary skill in the art that they
should have made the claimed subject matter and has revealed
that in so making or carrying out, those of ordinary skill in
the art would have had a reasonable expectation of success. See
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991)
Although appellant’s principal Brief does not present any
argument for patentability based on objective evidence of non-
obviousness, appellants in their Reply Brief mention that the
specification data demonstrates that the claimed compositions
exhibit exceptional noise dampening properties. After careful
consideration, we conclude that appellants have not established
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