Appeal No. 1998-1369
Application No. 08/622,620
for what it clearly teaches. See In re Widmer, 353 F.2d 752,
757, 147 USPQ 518, 523 (CCPA 1965).
Appellants also argue that Michaelis contains no example
to any specific combination of the mercaptan with another
component and that the reference fails to provide any
motivation to combine a mercaptan with component (A) as
required by the claims on appeal (Brief, page 11).
Appellants’ arguments are not well taken. As noted above, a
reference disclosure is not limited to its working examples.
See Widmer, supra. With regard to motivation, Michaelis
specifically suggests the combination of the mercaptan
additive with other EP/antiwear additives (see col. 4, ll. 32-
38).
Appellants specifically argue the limitations of claims
4, 9, 16, 17, 19-21, 22, 40, 41, 42-44, 45-46, and 50 (Brief,
pages 7-11). With regard to components (A) through (E) as4
found in claims 4, 9, 16, 17, 19-21, and 22, the examiner has
4Appellants argue the limitation of additive component
(E) as in “page 22" but apparently mean “claim 22.” See the
Brief, page 8. It is also noted that claims 45-46 and 50 are
only separately argued with respect to the rejection under
section 103 over Eby. Id. Accordingly, we only discuss these
limitations with respect to the Eby reference.
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