Ex parte GATES et al. - Page 2




                  Appeal No. 1997-1538                                                                                                                     
                  Application 08/184,172                                                                                                                   

                           2.                Claims 14 and 23 have been rejected under 35 U.S.C. § 103(a) as                                               
                                             unpatentable over  a publication authored by Gates et al.3                                                    
                  We reverse.  We also enter a new ground of rejection of claim 13.                                                                        
                           The claimed subject matter                                                                                                      
                           The invention relates generally to methods for lubricating silicon nitride.  The lubricant includes                             
                  an alcohol compound.  The preferred alcohols are said to be aromatic alcohols.  We select claim 13 as                                    
                  representative for rejection 1 and claim 14 as representative for rejection 2.  37 CFR § 1.197(c)(7).                                    
                  Claim 13 does not specify any particular alcohol requiring only that the alcohol have  “lubricating                                      
                  activity” and is not “a glycol or 2,6-ditertiarybutylcresol.”  Claim 14 specifies four generic groups of                                 
                  aromatic alcohols.  Claims 13 and 14 as they appear in the appendix to applicants’ brief are                                             
                  reproduced below:                                                                                                                        
                                    13.      A method for lubricating a silicon nitride ceramic surface which                                              
                                             comprises:  applying to the silicon nitride ceramic surface a                                                 
                                             composition comprising an alcohol compound, in an amount  sufficient                                          
                                             to provide a lubricating effect, wherein said  alcohol has lubricating                                        
                                             activity and is other than a glycol or 2,6-ditertiarybutylcresol.                                             

                                    14.      A method for lubricating a silicon nitride ceramic surface which                                              
                                             comprises:  applying to the silicon nitride ceramic surface a composition                                     
                                             comprising an alcohol compound, in an amount sufficient to provide a                                          
                                             lubricating effect,                                                                                           
                                                      wherein said alcohol compound is selected from the group                                             
                                                      consisting of:                                                                                       







                     33“Effect of Selected Chemical Compounds on the Lubrication of Silicon Nitride,” Vol. 34, Tribology                                  
                  Transactions, p. 417-425 (1991).                                                                                                         
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