Ex parte SHIN et al. - Page 6




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


          solvent.  (Column 5, lines 8-11.)  Additionally, we observe                 
          that Fenton does not indicate what relative amounts should be               
          used when a compound such as butane, one of the “hydrocarbon                
          spin liquid” species recited in appealed claim 20, is selected              
          as the mutual solvent and a compound such as isopropanol, a                 
          polar solvent, is selected as the precipitating solvent.                    
          While it is true that Fenton discloses the use of a                         
          substantial amount of isopropanol in Example 1, the                         
          hydrocarbon solvent used in the example is not a “hydrocarbon               
          spin liquid” within the scope of appealed claim 20.  Given                  
          Fenton’s teachings, it is our view that one of ordinary skill               
          in the art would have selected relative amounts for butane and              
          isopropanol that would result in precipitation, not solution.               
          Unlike Fenton, the invention recited in appealed claim 20                   
          requires the addition of greater than 10 weight percent of the              
          co-solvent such that the co-solvent acts as a true                          
          co-solvent and not a precipitating agent.                                   
               Since Fenton teaches that the combination of (i) the                   
          solution containing the polyolefin and (ii) the precipitating               
          solvent (e.g., alcohols) results in a mixture which is not a                
          solution, it follows that Fenton’s mixture does not meet each               
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