Ex parte YUAN - Page 13




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

          composition."                                                                
                                 CLAIMS 28, 29 AND 31                                  
               Claims 28, 29 and 31 are directed to a molybdenum                       
          disulfide dispersion where the molybdenum disulfide is                       
          dispersed in a liquid consisting essentially of kerosene,                    
          chloroparaffin and carbon tetrachloride.  Neither Fujii et al.               
          reference on which the examiner has relied discloses or                      
          suggests any non-aqueous liquid let alone a combination of                   
          kerosene, chloroparaffin and carbon tetrachloride.  Appellant                
          has expressly argued this fact in both his brief and reply                   
          brief as a basis for reversing the examiner's stated position.               
          The examiner has offered no substantive response to                          
          appellant's argument but has merely observed that, with                      
          respect to the rejection over Fujii '521, appellant's brief                  
          declares that claims 23 through 31 stand together as a group.                
               Nevertheless, the rejection over Fujii (A1) was first                   
          proffered in the Answer as a new ground of rejection under 35                
          U.S.C.  103 over all the appealed claims.  We find no                       
          application of the disclosure in Fujii (A1) as it would apply                
          to the subject matter claimed in claims 28, 29 and 31.  In                   
          rejecting an applicant's claims, it is by now well-settled                   

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