Appeal No. 94-3371
Application 07/986,878
sustain this rejection because the following negative limitation
in claim 73 appears to exclude the only dispersant recited in the
claims of DiBiase:
... provided that the dispersant is not an ester
obtained by reacting at least one substituted succinic
acylating agent with at least one alcohol of the
general formula
R (OH) (I)
3 m
wherein R is a monovalent or polyvalent organic group
3
joined to the OH groups through carbon bonds, and m is
an integer of from 1 to about 10 ....
The examiner has failed to provide any reasons for concluding
that the breadth of the claims on appeal would “include homologs
of the excluded ‘dispersant’.”
For the foregoing reasons, will reverse the examiner’s
rejection under the judicially created doctrine of obviousness-
type double patenting. However, we note that the negative
limitation in claim 73 excluding an ester obtained by reacting at
least one substituted succinic acylating agent with at least one
alcohol appears to be subject matter which may not comply with
the written description and best mode requirements of the first
paragraph of 35 U.S.C. § 112.
The negative limitation in claim 73 is not part of the
original disclosure, but was added by amendment during the
prosecution of the application. See Amendment A, Paper No. 6.
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