Appeal No. 1996-3826
Application 08/222,477
with appellant’s countervailing evidence of and argument for nonobviousness and conclude that the
claimed invention encompassed by appealed claim 32 would have been obvious as a matter of law
under 35 U.S.C. § 103.
We finally address the ground of rejection of claims 3 and 23 over Kawaai in view of
Morehouse and the ground of rejection of claim 31 over Kawaai in view of Dubin, further in view of
Morehouse. Each of these claims specify an aqueous fuel or method of making an aqueous fuel which
contains a polyorganosilioxane as a lubricity enhancer. The examiner submits that the teaching in
Morehouse to use a polyorganosilioxane to reduce foam in non-lubricating fluids would have suggested
using this polymer to enhance the lubricating properties of the aqueous fuels of Kawaai, with and
without Dubin (see Office action of June 1, 1995 (Paper No. 11, page 6); final rejection of October 24,
1995 (Paper No. 15; page 6); answer, page 9). We have carefully considered the examiner’s position
in light of appellant’s arguments (brief, e.g., page 23) and find that we agree with appellant that one of
ordinary skill in this art would not have combined Morehouse with Kawaai, with and without Dubin.
We further find that Morehouse (col. 1, lines 60-66) teaches that the organic liquids to which the
siloxane-polyoxyalkylene polymers would be added as an antifoaming agent include substantially
anhydrous fuels in which “trace amounts of water that may be present,” such as kerosene and gasoline.
We find that, on this record, such teachings would not have reasonably suggested to one of ordinary
skill in this art to add the polymer to an aqueous fuel. Accordingly, we reverse the ground of rejection
of claims 3, 5, 12, 16 and 23 over Kawaai in view of Morehouse, and the ground of rejection of claim
31 over Kawaai in view of Dubin, further in view of Morehouse.
In summary, we have affirmed the following grounds of rejection under § 103: claim 1 over
Kawaai; claims 2, 4, 6 through 11, 13 through 15, 17 through 22, 24 through 27 and 36 through 40
over Kawaai in view of Dubin; claims 28 through 30, 33 through 35 and 41 through 45 over Kawaai in
view of Dubin; and claims 32 over Kawaai in view of Dubin, further in view of Morehouse. We have
reversed the following grounds of rejection under § 103: claims 3, 5, 12, 16 and 23 over Kawaai in
view of Morehouse; and Claim 31 over Kawaai in view of Dubin, further in view of Morehouse.
The examiner’s decision is affirmed-in-part.
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