Ex parte MAHAR - Page 5




          Appeal No. 94-2973                                                          
          Application No. 07/956,529                                                  


          (II) a water-soluble anionic modified polyvinyl alcohol (col. 3,            
          lines 3-18 and lines 34-46).  There is no dispute that the                  
          polymeric dispersants and phosphate dispersants disclosed in                
          Shioji may be used alone or in combination with each other (Reply           
          Brief, p. 3).  Shioji further discloses that typical examples of            
          the water-soluble condensed phosphate (b) include “sodium,                  
          potassium, lithium, and other alkali metal salts” (col. 6, lines            
          6-8).                                                                       
               We agree with appellant that claim 1 “requires the                     
          combination of one or more polymeric anionic dispersants and one            
          or more selected alkali metal salts which do not include                    
          phosphate salts” (Brief, p. 6; emphasis in original).  According            
          to the examiner (Answer, p. 10):                                            
               The disclosure of Shioji at col. 7, line 62 to col. 8,                 
               line 5 clearly shows inorganic metal salts that fall                   
               within the scope of the presently claimed inorganic                    
               metal salts or alkali metal salts.                                     
               We agree with appellant that Shioji does not disclose water-           
          soluble alkali metals salts falling within the scope of claim 1.            
          As correctly pointed out by appellant (Reply Brief, p. 4):                  
               “The disclosure of Shioji at col. 7, line 62 to col. 8,                
               line 5" does not disclose any alkali metal salts.  As                  
               stated above, Shioji discloses only “hydroxides,                       
               carbonates, halides, and phosphates of calcium,                        
               magnesium[,] aluminum and other similar polyvalent                     
               metals” (col. 7, line 68-col. 8, line 2, emphasis                      

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