Appeal No. 1998-2543
Application 08/606,939
discloses alkyl phosphites where each of R1, R2, and R3 may be alkyl having 1 to 36 carbon
atoms; that Fukazawa’s generic disclosure embraces the subgenus of “asymmetric”
compounds recited by appellants; that both Fukazawa and appellants describe
compounds suitable for use in the cosmetic industry; and, therefore, that Fukazawa
anticipates the appealed claims under 35 U.S.C. § 102(b) (Examiner’s Answer, page 3,
last paragraph). We disagree with this line of reasoning.
In a nutshell, the phosphoric triesters recited in applicants’ claims require that R1 is a
C13-C20 branched alkyl or linear alkenyl; R2 is C11-C18 linear or branched alkyl or C11-
18 linear alkenyl; and R3 is C1-C6 linear, branched or cyclic alkyl. Again, as explained in
the Appeal Brief, page 4, these phosphoric triesters present an “asymmetric” configuration,
i.e., R1, R2, and R3 are long, long, and short, respectively. Having reviewed the Fukazawa
reference in its entirety, we find that Fukazawa does not identically disclose or describe
applicants’ “asymmetric” phosphoric triesters. See In re Arkley, 455 F.2d 586, 587, 172
USPQ 524, 526 (CCPA 1972) (Rejections under 35 U.S.C. § 102 are proper only when
the claimed subject matter is identically disclosed or described in the prior art.) Fukazawa
does not describe applicants’ “asymmetric” phosphoric triesters with a reasonable degree
of specificity. Apparently, the examiner would invoke a per se rule that a generic
disclosure of prior art compounds is sufficient to anticipate a subgenus of those
compounds having the same basic properties. However, the examiner does not cite any
authority, and we are not aware of any, to support such a proposition. On the facts of this
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