Appeal No. 2001-1249
Application 08/658,341
tripelargonate, which is among the second neopentyl polyol esters
encompassed by the appellant’s claim 40 (col. 8, lines 36-37).2
Consequently, the use of trimethylolpropane triisostearate,
trimethylolpropane trioleate, or a mixture of trimethylolpropane
triisostearate and trimethylolpropane tripelargonate as King’s
lubricant base would have been fairly suggested to one of
ordinary skill in the art by the applied prior art. Because
these synthetic lubricants are among those recited in the
appellant’s claims 27 and 40, they necessarily have the flash
point, kinematic viscosity and biodegradability recited in those
claims. See In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51
(CCPA 1963)(“From the standpoint of patent law, a compound and
all of its properties are inseparable; they are one and the same
thing.”)3
The appellant argues that each of the applied references
lacks some element of the invention recited in claims 27 and 40
(brief, pages 4-6). This argument is not well taken because the
2 Because trimethylolpropane triisostearate is disclosed by
the Zehler references and Mullin, the appellant’s argument that
this compound is not disclosed by Schmid (brief, page 4) is not
convincing.
3 Hence, the appellant’s argument that the references do not
address biodegradability (brief, pages 4-5) is not persuasive.
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