Ex parte CORLEY - Page 3




                Appeal No. 93-4332                                                                                                            
                Application 07/707,717                                                                                                        


                bisimides, provides bisimide resin compositions with good                                                                     
                physical properties and enhanced processability for electrical                                                                
                laminating applications (specification, page 1, line 24 to page                                                               
                2, line 12).                                                                                                                  
                         To describe the invention in greater detail, a copy of the                                                           
                claims as taken from the appeal brief is attached as an appendix                                                              
                to this decision.                                                                                                             
                         The reference relied upon by the examiner is:                                                                        
                Corley                            5,086,139                        Feb. 4, 1992                                               
                         Claims 1-15 stand rejected  under 35 U.S.C. § 101 as3                                                                         
                claiming the same invention as that of claims 21-25 of Corley.                                                                
                Claims 1-15 also stand rejected under 35 U.S.C. § 112 first and                                                               
                second paragraphs as the claimed invention is not described in                                                                
                such full, clear, concise and exact terms as to enable any person                                                             
                skilled in the art to make and use the same, and/or for failing                                                               
                to particularly point out and distinctly claim the subject matter                                                             
                which applicant regards as the invention.  For reasons developed                                                              
                below, we reverse each of the above-noted rejections.                                                                         


                         3We note appellant’s statement (brief, page 4) that “claims                                                          
                1-15 are rejected under 35 U.S.C. § 101 as claiming the same                                                                  
                invention as that of claims 1-25 of prior U.S. Patent No.                                                                     
                5,086,139.”  This statement is incorrect.  The correct statement                                                              
                of the rejection is noted at page 2 of the examiner’s answer                                                                  
                filed August 6, 1993 (paper no. 15).                                                                                          
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