Appeal No. 94-3184
Application 07/924,828
"being obtained" is not recited in a positive manner and suggests
that the word "being" be replaced with the word "are." 5
We agree with appellants that the examiner's position is a
semantical argument. One of ordinary skill in the art reading
claim 5 would understand that the solids and liquid hydrocarbons
of the claimed composition are obtained from the same source
(i.e., refinery waste stream) which initially contains liquid
hydrocarbons, water and solids. The fact that the examiner may
be of the opinion that there is more suitable language to define
the claimed invention is not a proper basis for a rejection under
35 U.S.C. § 112, second paragraph.
Prior art rejections
Claim 5 is drawn to a composition for use as a fuel
comprising specific ranges of water, solids and liquid
hydrocarbons. The composition has a viscosity such that it is a
pumpable fluid at ambient temperature. Furthermore, the solids
and liquid hydrocarbons of the claimed composition are obtained
from the same source (i.e., refinery waste stream) which contains
Appellants also proposed an amendment to claim 5 to obviate this5
rejection in the same amendment under 37 CFR § 1.116(a) referred to in the
previous section (paper no. 7). However, as pointed out above, the examiner did
not enter the amendment to claim 5 (paper no. 8).
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