Appeal No. 1999-0058
Application No. 08/701,878
22.2 See 37 CFR § 1.192(c)(7) (1997). Concerning the
obviousness-type double patenting rejection, however, the
appellants have not advanced any substantive argument, much less
separate arguments directed to the subject matter of appealed
claims 21 and 22. Accordingly, all of the appealed claims stand
or fall together with respect to the obviousness-type double
patenting issue.
We reverse the examiner's 35 U.S.C. § 112, second paragraph,
rejection, but affirm the 35 U.S.C. § 103(a) and obviousness-type
double patenting rejections. Our reasons follow.
Rejection under 35 U.S.C. § 112, Second Paragraph
The examiner's position is stated as follows:
Claims 1 and 21-23 lack essential steps in the
process of making the catalyst. The catalyst prepared
by the process of claims 1 and 21-23 comprise an
optional sulfur component and at least one alkali or
alkaline earth metal. Claims 1 and 21-23 do not set
forth any steps referring to the addition of said
alkali or alkaline earth metal component as well as the
optional sulfur component into the catalyst.
Therefore, it is unclear as to how the processes as
claimed can result in a catalyst optionally containing
sulfur and at least one alkali or alkaline earth metal.
[Examiner's answer, p. 3.]
We are in substantial agreement with the appellants'
analysis on this issue. (Appeal brief, pages 3-4; reply brief,
pages 1-2.) The test for definiteness under the second paragraph
of 35 U.S.C. ' 112 is whether one skilled in the relevant art
2 Claims 2 through 4, 7 through 14, 16 through 20, and 23
on appeal stand or fall together with claim 1.
4
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