Appeal 2007-0691
Application 10/465,423
1 and (c). In addition, Ciba attempts to limit the definition of (a) and (c) by
2 specifying that a lubricant comprising components (a) and (c), but without
3 component (b), produces a lead content which exceeds 100 ppm when
4 measured according to ASTM D 6594. The claim makes no attempt to
5 define the lead content of a lubricant comprising components (a), (b) and (c)
6 when measured according to ASTM D 6594. The claim reads on
7 compositions where the lead content of the claimed composition with
8 component (b) present could exceed the lead content when component (b) is
9 not present when measured according to ASTM D 6594.
10 Method claim 12 is similar. The only method step recited in claim 12
11 is "incorporating" into a composition comprising (a) and (c) a further
12 component (b). At no point in the claimed process is there a requirement
13 that the composition comprising components (a), (b) and (c) come into
14 contact with lead. It is difficult to see how a method of preventing corrosion
15 can take place by merely adding component (b) to a mixture of components
16 (a) and (c) and there is no contact with any lead source required.
17
18 Weight to be given the experimental data
19 The Examiner declined to give the experimental data much weight
20 finding that it is not commensurate in scope with the breadth of the claims.
21 Answer 5.
22 The Examiner expressed a concern that a showing based on one
23 triazole and one sulfur-containing compound does not justify a finding that
24 the same triazole would achieve the lead-lowering properties with other
25 sulfur-containing compounds. Answer 5. In other words, the Examiner
26 raised the reasonable question of whether lead-lowering properties are solely
13
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