Ex parte SHIN et al. - Page 5




          Appeal No. 1997-4336                                                        
          Application No. 08/279,317                                                  


          “single phase liquid spin solution.”  (Emphasis added.)                     
          Further, it is equally significant that appealed claim 20                   
          recites the amount for the                                                  
          co-solvent spin liquid as “greater than 10 weight percent.”                 
          In this regard, the specification explains as follows:                      
               Additionally, the co-solvent spin liquid must be                       
               added to the hydrocarbon spin liquid in an amount                      
               greater than 10 weight percent of the total                            
               hydrocarbon spin liquid and the co-solvent spin                        
               liquid present in order that the co-solvent spin                       
               liquid may act as a true                                               
               co-solvent and not as a nucleating agent. [Emphasis                    
               added; specification, p. 13, ll. 3-7.]                                 
          Thus, in the appellants’ claimed invention, the co-solvent                  
          spin liquid must act as a true co-solvent and not a                         
          precipitating (or nucleating) agent.                                        
               By contrast, Fenton describes the use of various                       
          compounds including alcohols as a precipitating agent or non-               
          solvent for the polyolefin resin.  (Column 3, lines 29-36;                  
          column 4, lines                                                             
          7-22.)  Even Fenton’s Example 1, which is specifically relied               
          upon in the examiner’s answer, teaches that the isopropanol                 
          acts as a precipitating solvent when combined with a solution               
          containing the polyolefin and a low polynuclear aromatic                    

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