Ex parte DELMAS - Page 5




          Appeal No. 1999-1810                                                        
          Application 08/288,433                                                      


          claims 18 and 20 under 35 U.S.C. § 112, fourth paragraph, is                
          that the preamble of claim 1 states that the claimed process                
          is a process for purifying an aqueous alkali metal chloride                 
          solution, and claims 18 and 20 recite processes for                         
          electrolyzing the solution produced by the process of claim 1               
          rather than further limiting the process for purifying the                  
          aqueous alkali metal chloride solution (answer, page 4).  The               
          fourth paragraph of § 112, however, does not require that a                 
          dependent claim must fall within the scope of the recited                   
          subject matter in the claim from which it depends but, rather,              
          requires that the dependent claim must specify a further                    
          limitation of the subject matter of the claim from which it                 
          depends.  Because the electrolysis step in claims 18 and 20 is              
          a further limitation of the subject matter of claim 1, claims               
          18 and 20 are in compliance with 35 U.S.C. § 112, fourth                    
          paragraph.  Consequently, we reverse the rejection of claims                
          18 and 20 under § 112, fourth paragraph.                                    
                         Rejections of claim 16 over Bissot                           
               The appellant discloses that the aqueous alkali metal                  
          chloride solutions which can be used in the process of their                


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