Ex Parte HENRICSON et al - Page 15



          Appeal No. 1998-3049                                                        
          Application No. 08/463,558                                                  

               Further, we observe that Phillip at column 5, lines 29-38              
          refers to a Tappi article, Canadian Patent 966,604 and U.S. Patent          
          4,080,869.  These patents and article are said to show ozone                
          bleaching stages for a pulp consistency of 1-40%, which are carried         
          out at a pH of 2-7.                                                         
               Finally, Dahllof describes what appears to be the claimed              
          process.  However, as recognized by the examiner, the publication           
          date of Dahllof is unknown.                                                 
               Upon return of this application, the examiner is to determine:         
          1)   Whether claim 18 and its dependent claims violate the written          
          description requirement under 35 U.S.C. § 112, first paragraph;             
          2)   Whether the subject matter of claim 27 is indefinite and/or is         
          not further limiting in violation of 35 U.S.C. § 112, second and            
          fourth paragraphs, respectively;                                            
          3)   Whether the patentability of the presently claimed subject             
          matter is affected by the teachings of the Tappi article, Canadian          
          Patent 966,604 and/or U.S. Patent 4,080,869, with or without                
          appellants’ admission in the specification and the declarations of          
          record and any other prior art references; and                              
          4)   Whether Dahllof is “prior art” and if it is “prior art”, what          
          claims are affected by its prior art status.                                

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