Appeal No. 94-3371
Application 07/986,878
2. Claims 2-7, 9-17 and 73 stand rejected under 35 U.S.C.
§ 112, first paragraph, on the ground that “the disclosure is
enabling only for claims limited to the specifically disclosed
‘dispersant’.”
3. Claims 2-7, 9-17 and 73 stand rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-55 of DiBiase.
Opinion
Appellants state that the claims do not stand or fall
together. On pages 6 and 7 of the Brief, appellants argue that
... neither Nadler nor Irwin et al alone or in3
combination disclose or suggest a process which uses a
dispersant and an overbased material as in Appellants’
claims 10 through 14.
Further, neither cited reference alone or in
combination disclose or suggest a process which uses a
dispersant and at least one metal salt of a
dihydrocarbyldithiophosphoric acid as in Appellants’
claims 15 through 17.
The examiner contends that claims 10-17 stand or fall together
because appellants’ arguments for separate patentability over the
3The original final rejection under 35 U.S.C. § 103 included Irwin et
al. (Patent No. 3,729,386). However, the examiner withdrew the reference as
being cumulative.
4
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