Appeal No. 94-3359
Application 07/941,566
of clarity, we understand the examiner's position with respect to
the rejections founded on both 35 USC 101 and 35 USC 112 to be
based on the scope of the molecular weight for the "substantially
non-diffusing polymeric" developers embraced by the claims. The
examiner opines that the language "an average molecular weight of
at least 1 x 10 " has no upper limit and therefore embraces3
"polymers or copolymers having millions or hundred millions to an
infinite molecular weight" (page 3 of the answer). The examiner
then concludes that a polymer as claimed but possessing "a
molecular weight of 10 millions or more would be a rock hard
solid which would lose its reactivity of an individual
hydroquinone as a well known silver halide reducing or black-and-
white developing agent in the photographic art." (page 3 of the
answer).
The examiner's separate rejection under 35 USC 112,
first paragraph, is founded on the examiner's theory that
appellants have failed to disclose how to obtain (make) polymeric
developing compounds within the language of the claims and having
"high molecular weight of 100, 1000, 10,000 millions or infinite
amount as broadly claimed." (page 4 of the answer). Additionally,
the examiner considers that the language that "Z" is "the group
consisting of -OH and a group which leaves an -OH residue when
contacted with an alkali (pH$10) at a temperature of #50EC" is
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