Appeal No. 1998-1369
Application No. 08/622,620
suggestion supporting the combination (Brief, page 7).
Appellants’ argument is not persuasive because the examiner
has identified the teaching or suggestion within each
reference which would have led one of ordinary skill in the
art to the claimed combination. See the Answer, page 5, where
the examiner has stated “[t]he motivation to make the
combination stem[s] from the express disclosure in each of the
references to combine each [mercaptan] additive with the known
lubricant oil additives...”.
Appellants similarly argue that Hill contains no teaching
to any specific additives and the only example of Hill is
directed to a combination of two mercaptans (Brief, page 9).
This argument is not persuasive for the same reasons as noted
above with respect to Eby, namely that the reference to Hill
specifically suggests the incorporation of other additives
with the mercaptan additive (see col. 2, ll. 12-17). It is
noted that these additives are as specific as the well-known
additives recited in the claims on appeal, e.g., component
(A). Additionally, the examples in a reference are merely
exemplary of the broader disclosure, all of which is available
8
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