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
that:
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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