Appeal No. 2001-0214
Application No. 08/826,283
metal elements for use in Chagnon[‘s] lubricant composition
and colloidal with the same attendant functional use.
Moskowitz provides the motivation to use Chagnon[‘s]
modified lubricant composition and colloidal suspension in
rolling elements to fill the surface asperities and extend
the life of the bearings.
This position, however, is flawed as it does not provide
sufficient factual bases for combining the teachings of the
applied prior art references to arrive at the claimed
composition. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g
denied, 390 U.S. 1000 (1968)(the examiner has the initial burden
of presenting a sufficient factual basis to support the
obviousness of making the claimed combination). Specifically,
the examiner has not demonstrated that Verdone teaches that its
process for producing a silver colloidal suspension is useful for
forming the ferrofluid of the type described in Chagnon. Nor has
the examiner demonstrated that the silver colloidal suspension
taught in Verdone is useful for the purpose or utility
described in Chagnon. Even if the remaining prior art
references teach that “metals are functional[ly] equivalent
in a colloidal suspension” as alleged by the examiner,
that fact alone does not indicate that there is requisite
suggestion or motivation to select the claimed metals and attach
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