Ex Parte Zehler - Page 2

                Appeal 2006-2269                                                                                  
                Application 10/051,938                                                                            

                                               INTRODUCTION                                                       
                       The claims are directed to a shock absorber containing one or more                         
                biodegradable esters as the dampening fluid (Specification 1, ll 3-4).  Claims                    
                38 and 46 are illustrative:                                                                       
                              38.  A shock absorber comprising a cylinder, the cylinder                           
                       defining a chamber therein and containing a fluid; a piston rod                            
                       sealingly projecting into the cylinder, the piston rod being axially                       
                       displaceable with respect to the cylinder; a piston attached to the                        
                       piston rod, the piston being slidably disposed within the cylinder to                      
                       sealingly divide the cylinder into a first chamber and a second                            
                       chamber; a passageway disposed in at least a portion of the piston                         
                       providing for fluid communication between the first and second                             
                       chambers; wherein the fluid comprises a biodegradable polyol ester,                        
                       said polyol ester having a polyol component and a carboxylic acid                          
                       component, the polyol component comprising a hindered polyol and                           
                       the carboxylic acid component comprising a mixture of two or more                          
                       C5, C6, C7, C8 and C9 linear monocarboxylic acids; and wherein said                        
                       fluid is at least 80% biodegradable.                                                       
                              46.  The shock absorber according to claim 38, wherein said                         
                       carboxylic acid component further comprises a dicarboxylic acid.                           
                       The Examiner relies on the following prior art references as evidence                      
                of unpatentability:                                                                               
                Funkhouser   US 2,630,193   Mar.  3, 1953                                                         
                Duncan   US 5,681,800   Oct. 28, 1997                                                             
                       The rejections as presented by the Examiner are as follows:                                
                    1. Claims 46-48, 62-64 and 76 are rejected under 35 U.S.C. § 112, 1st                         
                       paragraph as containing subject matter which was not described in the                      
                       Specification in such a way as to reasonably convey to one skilled in                      
                       the relevant art that the inventor(s), at the time the application was                     
                       filed, had possession of the claimed invention.                                            


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