Appeal 2006-2269
Application 10/051,938
used as a dampening (i.e., hydraulic) fluid. As the Examiner indicates,
Duncan discloses that his biodegradable fluids may be used as hydraulic
fluid (Duncan, col. 13, ll. 25-45). As part of his disclosure, Duncan further
indicates that when the fluid is used as hydraulic fluid, it is typically
composed of about 90-99% of the base stock of polyol esters with the
balance being additives (Duncan, col. 13, ll. 39-41). Duncan’s broad
disclosure reasonably appears to be applicable to any of his disclosed polyol
esters, including the “TPE/C810/Ck8” blend cited by the Examiner.
We are unpersuaded by Appellant’s argument that there is no
motivation or reasonable expectation of success in creating a fluid having
the mixture of linear carboxylic acids as claimed (i.e, a mixture of two or
more C5 to C9 linear monocarboxylic acids). Duncan clearly discloses that
“C810” acid mixture comprises a blend of C6 and C8 carboxylic acids
(See Table 1, 2, 3 and 8). Therefore, Duncan not only provides motivation
for making a mixture of linear monocarboxylic acids encompassed by
Appellant’s claims, but he also successfully produces the mixture as evinced
by his examples.
Based on the foregoing, we affirm the Examiner’s rejection of claims
38-40, 43, 52, 54-56, 59, 67-70, 73, 77-78 and 81-84 over Duncan in view of
Funkhouser.
35 U.S.C. § 112, 1ST PARAGRAPH REJECTION
The Examiner rejected claims 46-48, 62-64 and 76 under § 112, 1st
paragraph as containing new matter and thus violating the written
description requirement of this paragraph. Specifically, the Examiner stated
that the “limitations requiring a mixture of monocarboxylic acid and
dicarboxylic acid . . . are not supported by the disclosure . . .” (Answer 3).
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