Ex parte EICKEN et al. - Page 9

              Appeal No. 1997-3589                                                                                            
              Application No. 08/117,013                                                                                      

              (or references when combined) must teach or suggest all the claim limitations.  See In re Royka, 490            

              F.2d 981, 180 USPQ 580 (CCPA 1974).                                                                             

                      Yanai fails to anticipate or render obvious the claimed invention.  As described above,                 

              appellants' claims require the presence of a lubricant component.  Yanai, however, fails to teach or            

              suggest the presence of a lubricant.  Rather, Yanai teach a sizing composition containing a water-              

              soluble acrylic.  As stated by appellants, “a spinning finish composition is completely different from a        

              sizing composition based on the fact that inclusion of a sizing agent in the claimed spinning finish would      

              result in the fibers sticking to one another and breaking.”  (Brief on Appeal, p. 8).  The examiner has         

              failed to provide any scientific basis or reasoning as to how Yanai’s water-soluble acrylic would               

              provide filaments with the lubricant surface slip properties as required by the claimed invention.              

                                            Rejection over Fujita in view of Yanai                                            

                      The examiner contends that Fujita in view of Yanai renders obvious claims 19-28.  According             

              to the examiner, it would have been obvious to use the polyesters of Yanai for lubricating fibers per           

              Fujita because it would have been simpler to use commercially available polyethylene oxide diols and            

              polypropylene oxide glycols to make polyesters.                                                                 

                      Again, the examiner has failed to properly construe the language of the claims.  As stated              

              above, the claims require the presence of a lubricant component.  The examiner has failed to                    

              demonstrate that the sizing composition of Yanai with its modified water-soluble acrylic sizing agent           

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