Ex Parte Patel et al - Page 10


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

                   We do not find this argument persuasive.  WO ‘528 describes a dispenser                    
            containing an anti-galling agent.  WO ‘528, page 12, lines 8-28.  Appellants have not             
            distinguished the claimed structure from the dispenser disclosed in WO ‘528 and neither           
            have we.  The Examiner relies on Hefling for the addition of grease to WO ‘528, not the           
            characteristics of the dispensing container.  This rejection is affirmed.                         
            Claim 21                                                                                          
                   Claim 21 is directed to a method of using the article of manufacture of claim 20,          
            comprising “dispensing” a portion of the anti-seize composition, applying it to a threaded        
            surface, and “retracting” unapplied amounts.                                                      
                   Appellants argue that WO ‘528 “fails to teach the dispensing and application of            
            an anti-seize compound.”  Brief, page 10.  We disagree.  WO ‘528 specifically states              
            that its “dispenser is designed to contain the anti-galling agent to controllably dispense        
            the anti-galling agent.”  WO ‘528, page 12, lines 8-9.  “The dispenser also includes a            
            mechanism to allow a user to controllably remove the solid from the cavity of the                 
            dispenser.  The mechanism can include a movable base, a threaded member, a                        
            slidable side member, etc.”  Id., page 12, lines 14-17.  We find that these elements              
            describe and enable the claimed method.  Appellants have not provided persuasive                  
            arguments to the contrary.                                                                        
                   We have also considered Appellants’ other arguments about Hefling and WO                   
            ‘628, but do not consider them persuasive because they are not pertinent to the article           
            of manufacture which is claimed.  This rejection is affirmed.                                     









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