Appeal No. 95-2950
Application No. 07/855,127
The § 102 Rejections
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
v. Applied Digital, 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984). Here, the examiner has failed to carry her
burden of establishing that either Biresaw or Laemmle
discloses, expressly or inherently, each and every element of
the claims under rejection including most particularly the
claim requirement that the branched aliphatic substituent of
the succinic acid or derivative contain at least nine carbon
atoms, at least three of which are tertiary carbon atoms.
For example, the examiner makes the finding “Laemmle
explicitly teaches 2-dodecenyl succinic acid salts” and then
concludes “which is clearly appellants' dodecenyl (propene
tetramer)” (Answer, page 8). Although her finding is correct,
the examiner's conclusion is completely without support.
Moreover, this conclusion is rebutted by the appellants'
argument that “[t]he term '2-dodecenyl', without more fails to
suggest branching and means nothing more than a 12 carbon
olefin having one double bond at the second carbon atom”
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