Ex parte YUAN - Page 11

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

          ever intended to exclude the parts per million of titanium                   
          dioxide disclosed by Fujii '521 for their lubricant                          
               Neither have we overlooked appellant's further argument                 
          that his claim language specifically excludes titanium                       
          dioxide. In the first instance, this argument is mooted by our               
          finding that the references "describe" the subject matter of                 
          claim 23. Nonetheless, there is evidence in the record which                 
          also addresses the question of whether or not it would have                  
          been obvious to exclude the titanium dioxide from Fujii '521                 
          along with its attendant function. For example, in Published                 
          UK Patent Application GB 2 002 812 A cited by appellant during               
          the prosecution of his application, aqueous soap-based                       
          lubricants for cold metalworking are disclosed to be improved                
          in lubricity properties by the inclusion of inorganic                        
          pigments.  Thus, because titanium dioxide is a well-known                    
          pigment its further inclusion in the Fujii '521 composition                  
          would have been expected to further enhance the composition's                
          lubricity while its removal would be expected to be evidenced                
          by a concomitant decrease in lubricity.                                      
               Finally, we shall address appellant's argument that the                 


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