Ex parte CATANEO et al. - Page 6




              Appeal No. 94-1549                                                                                        
              Application 07/945,540                                                                                    



                                Rejection Under 35 U.S.C.  112, Second Paragraph                                       
                     As set forth at page 2 of the Final Office Action (Paper No. 5, May 13, 1993), the                 
              examiner rejects these claims on the basis “[t]he language ‘effective amount’ absent a                    
              [sic] indication of what it is effective for is indefinite.”                                              
                     In our view, this rejection is based upon a misreading of claim 5.  Claim 5 in                     
              relevant part requires “an effective amount up to about 15% co-solvent.”  Obviously, the                  
              additive specified in this claim is to function as a co-solvent.  As to what amounts would                
              be suitable as the “effective amount,” we point to Table 1 of the specification which sets                
              forth exemplary compositions which include co-solvents.                                                   
                     The rejection under 35 U.S.C.  112, second paragraph, is reversed.                                


                                 Rejection under 35 U.S.C.  112, Fourth Paragraph                                      
                     The basis for this rejection is that claim 1 on appeal uses the phrase “consisting                 
              essentially of” while the remaining claims use the phrase “comprising” or “comprises.”                    
              In the examiner’s view, it appears that appellants are attempting to modify the                           
              restrictive phrase “consisting essentially of” in claim 1 in the subsequent claims by the                 
              non-restrictive phrase “comprising.”                                                                      
                     Appellants do not dispute the merits of this rejection.  Rather, appellants argue                  
              at page 2 of the Reply Brief (Paper No. 11, filed January 10, 1994) that it was the intent                

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