Appeal No. 94-3371
Application 07/986,878
with a dicarboxylic acid derivative (e.g. lauryl fumarate) to
form the claimed dispersant (col. 3, lines 18-50). Accordingly,
we will sustain the rejection of claims 2-7, 9 and 73 over
Nadler. However, we agree with appellants that Nadler does not
teach or suggest a process which uses a dispersant containing a
metal salt as set forth in appellants’ claims 10-17.
The examiner determined that claims 10-14 only require
“minor amounts” which can be interpreted as including “trace
amounts” of a metal salt. From this, the examiner concluded that
“Nadler includes dispersants produced from materials such as
carboxylic esters which are neutral acidic organic compounds and
it would be reasonable to assume that a minor amount, which
includes trace amounts, of the starting materials used to produce
the dispersants would remain therein” (Answer, page 7). We do
not agree.
The examiner has not provided any evidence or an analysis of
the prior art to support his conclusion. Cf. In re Brouwer, 77
F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re
Ochiai, 71 F.3d 1565, 1569-72, 37 USPQ2d 1127, 1131-33 (Fed. Cir.
1995). Moreover, original claim 60 in appellants’ specification
recites the amount of the metal salt added to be “from about 0.1
to about 20% by weight.” This amount would hardly be considered
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007