Appeal No. 94-3184
Application 07/924,828
liquid hydrocarbons, water and solids whereby all of the heat
value of the composition is derived from components initially
present in that source.
A. Rejection under 35 U.S.C. § 102(b)
Claims 5 and 6 are rejected under 35 U.S.C. § 102(b) as
being clearly anticipated by Chu. We reverse this rejection.
Chu discloses a fuel composition comprising water, solids,
oil and a filter aid. Arguably one can extract appellants'
claimed composition ranges from the ranges disclosed in Chu, see6
specifically col. 4, lines 45-54 (Brief, p.6). However, the
composition of claim 5 also contains the following limitations
not taught or suggested in Chu:
We note that the examiner has made several rejections under 35 U.S.C.6
§ 112. However, the examiner has not rejected claims 5 and 6 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for claiming a composition having
mathematically incorrect ranges of components. A composition falling within the
scope of claim 5 comprising liquid hydrocarbons in an amount equal to or greater
than 62% by weight would result in a composition comprising components totaling
in excess of 100% by weight, a mathematical impossibility.
We note that the examiner made a similar rejection of claim 1 in the Office
action dated January 4, 1993 (paper no. 4), wherein the examiner stated:
. . . the "30 to about 70 percent-by-weight combustible" would not
provide for the inclusion of water, nor greater than 35 percent
solids when the upper range of 70 percent liquid is used because it
would total to greater than 100 percent composition.
In response to this Office action, appellants canceled claims 1-4 and added
new claims 5 and 6 (paper no. 5). However, contrary to appellants' remarks and
failure to comment on the above-noted rejection, the cancellation of claims 1-4
and submission of newly added claims 5 and 6 do not appear to have corrected this
deficiency. In any subsequent prosecution, the examiner should consider whether
a rejection of claims 5 and 6 under 35 U.S.C. § 112, second paragraph, based on
the above-identified grounds is proper.
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