Appeal No. 94-3371
Application 07/986,878
Again, an amount comprising about 0.1 to about 20% can hardly be
considered a “trace amount.” The examiner has not presented any
scientific reasoning to conclude that a “minor amount” of a
metal salt of a dihydrocarbyldithiophosphoric acid would not
materially affect the claimed process. Accordingly, for the
reasons given above the rejection of claims 15-17 under 35 U.S.C.
§ 103 over Nadler is reversed.
Non-Enablement Rejection
The examiner has found the claims to be non-enabling under
the first paragraph of 35 U.S.C. § 112 on the ground that “the
disclosure is enabling only for claims limited to the
specifically disclosed dispersant” (Answer, page 5). The
examiner concluded that undue experimentation would be required
because “the specification presents no correlation between
structure and function which would enable one of ordinary skill
in the art to reasonably predict which of the myriad dispersants
included by the claims would be useful and which would not be
useful” (Answer page 5). We will reverse this rejection for
essentially those reasons expressed in appellants’ Brief. The
examiner’s conclusion lacks supporting scientific reasoning
and/or evidence to persuade us that a correlation, or the lack
thereof, between structure and function is required to enable one
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