Appeal 2007-4234
Application 10/929,891
[39] Appellant contends that the translation of Ohkura makes clear that,
contrary to the Examiner's position, Ohkura is not concerned with
slop oil (Reply Br. at 3).
[40] Finally, Appellant also argues that just because crystalline wax is
present in slop oil (as required by claim 4), it does not follow that
dispersing slop oil in water will convert crystalline wax to amorphous
wax as recited in claim 1 (Br. at 4; Reply Br. at 2).
B. Discussion
Anticipation requires disclosure of each and every claim limitation in
a single prior art reference, either explicitly or inherently. MEHL/Biophile
Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed.
Cir. 1999). Anticipation by a prior art reference does not require either the
inventive concept of the claimed subject matter or recognition of inherent
properties that may be possessed by the reference. Verdegaal Brothers Inc.
v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054
(Fed. Cir. 1987). When a claimed method reasonably appears to be the same
or substantially the same as a method disclosed in the prior art, it is
reasonable to shift the burden to applicant to show that they are, in fact,
patentably different methods. In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657-58 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
432-33 (CCPA 1977).
The method of claim 1 comprises chemically treating the crystalline
wax in a petrochemical mixture to reduce the surface tension of the
crystalline wax, converting it to an amorphous wax, and dispersing the
amorphous wax in a diluent. There are no limitations recited in claim 1 as to
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