Appeal No. 1999-1808
Application 08/826,305
order to improve the durability, tribological activity, and lubrication of the coatings
(Examiner’s Answer, page 5, lines 1-3).
In response, the Appellants contend that although “the prior art appears
combinable in a manner that will yield the claimed invention, this fact alone does not
make the resultant combination obvious” (Appeal Brief, page 7, lines 7-9). More
specifically, the Appellants argue that the cited prior art lacks “both the requisite (i)
motivation or suggestion to make the proposed combination and (ii) reasonable
expectation of success” (Appeal Brief, page 7, lines 13 - 15).
As the Appellants have conceded the combination of the cited prior art yields the
claimed invention, we will primarily direct our attention to the issues the appellant has
argued in the Brief: whether there is the requisite motivation or suggestion in the art to
make the combination, and whether one of ordinary skill in the art would have had a
reasonable expectation of success of the combination.
To support the motivation for his case of obviousness, the Examiner points
specifically to Nosov, page 2, Table 2 and page 3, Table 3, stating that a “direct
comparison between a coating with MoS2 alone and ones with both MoS2 and Sb2S3
exhibit improved durability, tribochemical activity and lubrication for the combination of
MoS2 and Sb2S3.” (Examiner’s Answer, page 5, lines 7 - 10).
The Appellants take issue with this characterization, stating that “Nosov is ...
silent regarding the use of Sb2S5 in combination with MoS2. Rather, Nosov teaches,
inter alia, a mixture of solid lubricants consisting solely of MoS2 and Sb2S3. Nosov does
not suggest adding Sb2S3 to an aqueous coating comprising a hydrophilic resin, MoS2,
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