Ex parte ST. CLAIR et al. - Page 4




             Appeal No. 96-1781                                                                                   
             Application 08/389,521                                                                               


             37 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR                                                    
             § 1.192(c)(7)(1995).                                                                                 





                                          Rejection of claim 11                                                   
                    Anderson (col. 2, lines 7-13), Bozzi (col. 2, lines 46-                                       
             55; col. 6, lines 47-50) and Howell, Jr. (col. 5, lines 38-46;                                       
             col. 7, lines 30-45) each disclose a process for making a                                            
             water dispersion of an epoxy resin by dissolving an epoxy                                            
             resin and an aminoplast in an organic solvent, and dispersing                                        
             this mixture in water and a surfactant using a high shear                                            
             mixer.                                                                                               
                    Appellants argue that their process does not use or                                           
             require and organic solvent (brief, page 5).  We are not                                             
             persuaded by this argument because there is no language in                                           
             appellants’ claims which excludes an organic solvent, and                                            
             because appellants’ claims use the transition term                                                   
             “comprising”, which opens the claims to include the step of                                          
             dissolving the epoxy resin and aminoplast in an organic                                              
             solvent before this mixture is combined with the                                                     
                                                      -4-4                                                        





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