Appeal No. 94-3371
Application 07/986,878
skilled in the art to practice the invention. Appellants have
cited numerous patents in their specification for making the
claimed dispersants which we consider to be more than adequate to
convey to one skilled in the art how to make the dispersants and
to make a determination of which dispersants would be useful to
practice the ivention. For these reasons, we are unpersuaded
that undue experimentation would be required to make such a
determination.
Obviousness-Type Double Patenting Rejection
Claims 2-7, 9-17 and 73 have been rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over claims 1-55 of the DiBiase patent.
Appellants contend that the patent “teaches the use of a
dispersant which is a carboxylic ester prepared from a succinic
acylating agent and an alcohol” and that the claims herein “are
directed to specific dispersants which do not include the ester
dispersants of DiBiase et al.” (Brief, page 9). The examiner
concedes that the “conflicting claims are not identical,” but
that “they are not patentably distinct from each other because
the ‘dispersant’ is so broad in the instant claims as to include
homologs of the excluded ‘dispersant’ which are claimed in the
patent” (Answer, paragraph bridging pages 3 and 4). We will not
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