Appeal No. 1999-0543
Application No. 08/807,210
improper. Specifically on page 3 of the subject request, the
appellants urge that “the claims cannot stand rejected on the
basis of the Japanese reference in combination with Miyaji in
that Miyaji cannot be used to support the reference since it
clearly teaches in a direction contrary to that achieved in
accordance with appellants’ invention and this contrary teaching
must be given consideration”.
We have again carefully evaluated the appellants’ above
noted position giving full consideration to the applied reference
teachings including the particular teachings referred to by the
appellants in their request. In this regard, we recognize the
appellants point out that Miyaji associates cleanliness problems
with the presence of mineral oil in lubricating oil compositions
for two-cycle engines (see lines 28-33, in column 1). As
indicated in our above noted decision, however, Miyaji expressly
discloses using at least some amount of mineral oil in his
lubricating oil composition (see the paragraph bridging columns 3
and 4) and therefore plainly does not teach away from the use of
any and all amounts of mineral oil in compositions of the type
under consideration. Further, as also indicated in our decision,
it is significant that the Japanese reference expressly teaches
the effectiveness of a two-cycle engine oil composition which
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