Ex parte ODA et al. - Page 11




                 Appeal No. 95-3484                                                                                                                     
                 Application 08/098,236                                                                                                                 


                 1500-4000 (answer, page 9).  This argument is based on an                                                                              
                 incorrect reading of Stearns, which discloses molecular                                                                                
                 weights of 300-4000 (col. 5, lines 13-16; col. 6, lines 55-                                                                            
                 57).                                                                                                                                   
                          We note that there is a difference between the number                                                                         
                 average molecular weights in Stearns’ Examples I and II the                                                                            
                 corresponding number average molecular weights in the                                                                                  
                 declaration.   In Stearns’ Examples I and II, the molecular3,4                                                                                                              
                 weights are, respectively, 706 and 453, whereas the                                                                                    
                 corresponding molecular weights in the declaration are,                                                                                
                 respectively, 650 and 570.  The reason for this discrepancy,                                                                           
                 and whether it indicates that the values of Q and Z for                                                                                
                 Examples I and II in the declaration are questionable, are                                                                             
                 issues which were not raised by the examiner or appellants.                                                                            
                 On the basis of the present record, we find, in view of the                                                                            
                 Kinoshita declaration filed on April 21, 1983, that the Q and                                                                          
                 Z values recited in appellants’ claims are not inherent                                                                                

                          3  Stearns states that the molecular weights throughout the specification                                                     
                 are number average molecular weights (col. 3, lines 50-52).                                                                            
                          4  The molecular weight for Stearns’ Example III is similar in Stearns                                                        
                 and the declaration, i.e., 1059 in Stearns (col. 13, line 73) and 1029 in the                                                          
                 declaration (page 2).  The molecular weight for Example IV prior to                                                                    
                 hydrocracking is not reported by Stearns.                                                                                              
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