Ex parte YUAN - Page 8

          Appeal No. 1997-0461                                                         
          Application 08/267,683                                                       

          the prior art applied against Herz's claims (Messina), the                   
          court in Herz at 537 F.2d 552 [4], 190 USPQ 463, concluded                   
               Appellants' specification states that the                               
               composition can contain any of the well-known                           
               additives, including dispersants. There is no                           
               evidence that Messina's dispersants would materially                    
               affect the basic and novel characteristic of their                      
               composition, and all evidence is to the contrary.                       
               Messina's composition has the same basic and novel                      
               characteristic - increased oxidation resistance -                       
               although it has additional enhanced detergent-                          
               dispersant properties. (underlining added)                              
          Thus, the proper focus is on the materiality of the effect any               
          added ingredient has on what the inventors believe to be the                 
          novel characteristics of their claimed invention.                            
               Here the "basic and novel characteristics" of the claimed               
          invention is a composition which serves as a lubricant and                   
          coolant which are the same "basic and novel" characteristics                 
          of both Fujii et al. references.  As an aqueous soap                         
          dispersion of molybdenum disulfide, the compositions of both                 
          Fujii et al. references would inherently be understood by any                
          skilled lubricant chemist to possess both cooling properties                 
          because of their water content and lubricity properties                      
          because of the presence of both the soap and molybdenum                      
          disulfide, each possessing known lubricant properties.  Thus,                

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