Ex parte GATES et al. - Page 8




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

                                      5                                                                          6          7                         
                           Claim 13  is rejected under 35 U.S.C. § 102(b) as unpatentable over Tsunai  or Hibi.   Both                                     
                  reference are of record in the application file.                                                                                         
                           Each reference describes applying a composition comprising an alcohol compound, to a silicon                                    
                  nitride ceramic surface, in an amount sufficient to provide a lubricating effect, wherein said  alcohol has                              
                  lubricating activity and is not a glycol or 2,6-ditertiarybutylcresol.  The n-alcohols described in the                                  
                  references fall within the alcohols defined in claim 13.  Tsunai states:                                                                 
                                    The experimental results showed that Si N  is lubricative with the n-alcohols,                                         
                                                                                     3  4                                                                  
                                    not only with the higher alcohols of Nc$5, but also with the lower alcohols of                                         
                                    Nc# 4, even at low sliding speed.                                                                                      
                  Tsunai, p. 373.  Hibi has a similar teaching relating to two series of experiments which demonstrate the                                 
                  lubricating effect of n-alcohols:                                                                                                        
                                             In the first series of experiments, both the friction and wear were                                           
                                    significantly higher in water than in the n-alcohols.  The friction coefficient was                                    
                                    0.78 in water, 0.14 in the n-alcohols for Nc# 4 and 0.09 for 5 # Nc # 10.                                              
                                    Wear in n-alcohols was minimal: it decreased with an increase of Nc for Nc #                                           
                                    4 and it was very small for Nc $ 5.  In methanol even small concentrations of                                          
                                    water degraded both the friction and wear characteristics.                                                             
                                             The second series of experiments showed that hydrodynamic                                                     
                                    lubrication did not occur in water or in nonanol in the velocity range tested (up                                      
                                    to 800 mm/s), but it was obtained in methanol and in ethanol at a velocity of                                          
                                    800 mm/s for the range of load and speeds examined.  The wear in water was                                             
                                    more than 10 times greater than that in lower alcohols.                                                                
                  Hibi, p. 1.                                                                                                                              



                     55We have not considered the patentability of any other claims with respect to this new ground of rejection.                         
                     66Y. Tsunai et al., “Tribochemical Wear of Silicon Nitride in Water, n-Alcohols and their Mixtures,” Wear of                         
                  Materials, p. 369-374 (1989)                                                                                                             
                     77Y. Hibi et al., “Friction and Wear of Silicon Nitride in Water, n-Alcohols, Water-Methanol and Water-                              
                  Glycol,” Bulletin of Mechanical Engineering Laboratory, Japan, No. 53, p. 1-15 (1990).                                                   
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