Appeal No. 96-1126
Application 08/132,080
produce either of the two fatty acid amide species specified in appealed claim 1. The
examiner has not advanced on this record any evidence or scientific reason explaining why one of
ordinary skill in this art would have been motivated to modify the processes of Abrams by the use of
different steps or starting materials to obtain either of the two specified species or otherwise use such
species in the compositions of the reference with the reasonable expectation of preparing an aqueous
base lubricant composition. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d
1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531(Fed. Cir. 1988); see also In re Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed.
Cir. 1996); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 254-55 (CCPA 1979). Accordingly, it
is inescapable that the only direction to appellants’ claimed invention as a whole on the record before us
is supplied by appellant’s own specification. See Vaeck, supra.
The examiner’s decision is reversed.
Reversed
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
PAUL LIEBERMAN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PETER F. KRATZ )
Administrative Patent Judge )
- 2 -
Page: Previous 1 2 3 Next
Last modified: November 3, 2007