Ex parte CAPORICCIO - Page 5




          Appeal No. 1996-0098                                                        
          Application No. 08/207,512                                                  


          appellant that Hong's single reference to a boron nitride                   
          particle size of about 1 micron (column 2, lines 9-11) clearly              
          does not teach or suggest appellant's claimed bimodal size                  
          distribution that requires boron nitride particles of two                   
          distinct size ranges; but, rather suggests a substantially                  
          singular or uniform particle size of about 1 micron (Brief,                 
          page 6).                                                                    
               Since the examiner acknowledges that Christian does not                
          even teach the use of boron nitride as a grease component                   
          (Answer, page 5), the addition of the latter reference to the               
          teachings of Hong does not cure the above-noted deficiency.                 
          Accordingly, the examiner's § 103 rejection of claims 10 and                
          11 likewise falls short of presenting a prima facie case of                 
          obviousness.                                                                
               Regarding the examiner's § 103 rejection of claims 1-3, 5              
          and 7-12 over the combined teachings of Caporiccio and                      
          Takahashi, we again observe that the applied references'                    
          teachings, even if combined, lack any specific teaching or                  
          suggestion of using a bimodal particle size distribution of                 
          boron nitride particles in a grease composition as claimed.                 
          While Takahashi does disclose employing boron nitride powder                
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