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
compositions.
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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