Ex Parte Patel et al - Page 9


            Appeal No. 2006-3310                                                          Page 9              
            Application No. 10/282,424                                                                        

            grease in an anti-seizing composition by including it in his preferred specific                   
            embodiments.  Id., column 7, lines 5-10; column 8, lines 40-45; column 10, lines 50.              
            The skilled worker would have been motivated to have selected grease as a component               
            of a dispersion system in view of Helfing’s teaching of it as a typical and preferred             
            alternative for anti-seizing compositions.                                                        
                   Appellants’ argument focuses on the disclosure by Hefling that the metal flakes,           
            which are the anti-seizing agent, are first dispersed in oil, and then formulated with other      
            ingredients, which include grease.  Reply, pages 4-5.  They assert that grease is not             
            used as a dispersion system.  We agree with Appellants that Hefling’s manufacturing               
            process involves the production of an initial dispersion of the metal flakes in oil to which      
            grease is added in later.  However, this does not foreclose the subsequent addition of            
            grease for its prior art function as a dispersing agent.  Hefling includes grease in its          
            preferred embodiments, which we consider a strong teaching to add it to an anti-seizing           
            composition.                                                                                      
                   For the foregoing reasons, we find that claim 1 is prima facie obvious over WO             
            ‘528 in view of Hefling.  This rejection is affirmed.  Claims 2-6, 8-19, and 24 fall with         
            claim 1 because they were not separately argued.                                                  
            Claim 20                                                                                          
                   Claim 20 is drawn to a “dispensing container” which comprises the “solid anti-             
            seize” of claim 1.  Appellants argue that WO ‘528 and Hefling fail to “teach a grease or          
            an article of manufacture comprising a grease-containing anti-seize composition, as is            
            recited in claim 20.”  Brief, page 8.                                                             







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