Ex parte EMERT et al. - Page 4




          Appeal No. 1996-0047                                                        
          Application No. 08/047,758                                                  


          moieties, per molecule of said second olefin polymer present                
          in the reaction mixture used to form said second acid                       
          producing material; and (b) a second nucleophilic reactant                  
          selected from the group consisting of amines, alcohols, amino               
          alcohols and mixtures thereof.                                              
               Claims 1 through 33 stand rejected under 35 U.S.C. § 112,              
          first paragraph, as lacking descriptive support for the                     
          claimed subject matter in the disclosure as originally filed;               
          lacking an enabling disclosure for the claimed subject matter               
          and lacking a best mode of carrying out the claimed subject                 
          matter.  We reverse.                                                        
               At the outset, we note that appellants request that we                 
          review the objection to the specification under 35 U.S.C. §                 
          132 and 35 U.S.C. § 112.  However, we will not exercise our                 
          jurisdiction over this matter because the newly inserted                    
          phrases in the specification do not affect the claims or the                
          rejection in question.  Specifically, the claims do not                     
          include such newly inserted phrases.  Rather, they only recite              
          those specific species of monocarboxylic acids, which are                   
          explicitly described in the application disclosure as                       
          originally filed.  The newly inserted phrases, however, are                 
          directed to a subgenus of monocarboxylic acids, which is not                
          explicitly described in the original application disclosure.                
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