Appeal No. 1997-0436
Application 08/277,692
esterification of a polyoxyethylene represented by the following formula (I):
(I) CH2-O-(AO)n-H
?
CH-O-(AO)n-H
?
CH2-O-(AO)n-H
wherein each n, which may be different from the others, represents an integer from 1 to 10, and
AO is the oxyethylene group, with at least one polycarboxylic acid compound having from 2 to 20
carbon atoms, and at least one monocarboxylic acid compound having from 2 to 20 carbon atoms.
6. Use of the lubricant according to claim 5, in a closed refrigerator system which is of the compression
type.
We select claims 1 and 6 for consideration of the respective issues in the two grounds of
rejection advanced by the examiner on appeal because appellants state in their brief that the “claims
stand or fall as a single group” (page 3). 37 CFR § 1.192(c)(7) (1995).
The reference relied on by the examiner is:
Seiki et al. (Seiki) 0 461 262 Dec. 18, 1991
(published Eur. Pat. Application)
The examiner has rejected appealed claims 1 through 5 and 10 under 35 U.S.C. § 103 as being
unpatentable over Seiki (answer, pages 2-3)2 and has further rejected appealed claims 6 through 9
under 35 U.S.C. § 101 “because the ‘use’ of a composition is not a statutory class of invention”
(answer, page 3).3
We affirm the ground of rejection under § 101 but reverse the ground of rejection under §
103.
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
2 The statement of this ground of rejection appears in the final rejection of November 20, 1995 (Paper
No. 11; pages 3-4).
3 The examiner withdrew the rejection of claim 9 under 35 U.S.C. § 112, second paragraph (answer,
page 2).
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