Ex Parte Wollenberg et al - Page 4


                   Appeal No. 2007-0495                                                                                             
                   Application No. 10/699,510                                                                                       

                           Have the appellants shown that the examiner has failed to establish that claims 1,                       
                   13, and 14 are obvious over claims 20, 22, and 23 of copending Application 10/699,529?                           
                                                          FINDINGS OF FACT                                                          
                           The appellants’ invention relates generally to high throughput preparation of a                          
                   plurality of different lubricating oil compositions for combinatorial libraries and                              
                   subsequent high throughput screening for lubricant performance (specification, p. 1, lines                       
                   5-7).                                                                                                            
                           Combinatorial chemistry generally refers to methods and materials for creating                           
                   collections of diverse materials or compounds—commonly known as libraries—and to                                 
                   techniques and instruments for evaluating or screening libraries for desirable properties                        
                   (specification, p. 1, lines 15-17).                                                                              
                           The base oil of the appellants’ lubricating oil compositions may be any natural or                       
                   synthetic lubricating base oil (specification, p. 6, lines 15-17).                                               
                           The base oil may be derived from natural lubricating oils, synthetic lubricating                         
                   oils or mixtures thereof (specification, p. 7, lines 1-2).                                                       
                           Synthetic lubricating oils include silicon-based oils (specification, p. 9, lines                        
                   11-13).                                                                                                          
                           Additives can be any presently known or later-discovered additive used in                                
                   formulating lubricating oil compositions (specification, p. 10, lines 20-21).                                    
                           Figure 1 illustrates a system 100 for preparing a plurality of test samples.  Vessel                     
                   110 contains a supply of base oil B, and vessel 120 contains a supply of additive A                              
                   (specification, p. 15, lines 18-22).                                                                             



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