Appeal 2006-2269
Application 10/051,938
Additionally, Zehler ‘179 is directed to “lubricants, lubricant base
stocks, refrigerant working fluids including lubricants, along with primary
heat transfer fluids and methods of using these materials” (Zehler ‘179,
col. 1, ll. 6-9). Zehler ‘179 further describes that “the lubricants and
lubricant base stocks are particularly suitable for use with substantially
chlorine-free, fluoro-group-containing organic refrigerating heat transfer
fluids such as tetrafluoroethanes” (Zehler ‘179, col. 1, ll. 9-12). The context
of the Zehler ‘179 patent is directed to lubricants and refrigerant working
fluids, not hydraulic fluids that are used in shock absorbers as is the
currently claimed invention. This further supports our determination that
Appellant’s incorporation in his Specification of Zehler ‘179 is with respect
to only the method of making the esters, not the particular compositions.
Moreover, we note that there is no indication from Zehler ‘179 alone
or taken with Appellant’s originally filed Specification that Appellant had
possession of the mixture of monocarboxylic acids and dicarboxylic acid as
claimed. In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972). We
observe that Zehler ‘179 generically describes divalent and monovalent
acids (Zehler, col. 3, ll. 21-29, 40-55). However, as the Examiner notes, we
find no disclosure of the particular combination the Appellant is now
claiming (i.e., “two or more C5, C6, C7, C8 and C9 linear monocarboxylic
acids” and a dicarboxylic acid). In this latter regard, we observe that Table 3
of Zehler ‘179 discloses a combination of C5 and C4 monocarboxylic acids
(i.e., pentanoic acid, 3-methyl butanoic acid, and 2-methyl butanoic acid)
with a dicarboxylic acid (either adipic or azelaic acid). However, this
disclosure does not support Appellant’s claimed mixture of “two or more
C5, C6, C7, C8 and C9 mono carboxylic acids” with a dicarboxylic acid.
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