Appeal No. 94-3371 Application 07/986,878 the amount of knowledge imparted by the disclosure to those of ordinary skill in the art. In re Wertheim, supra. On pages 3, 4, 14 and 15, Appellants describe a dispersant in the hydrocarbon oil mixture, which according to appellants is a preferred embodiment of the invention. This dispersant is identical to the dispersant set forth in the negative limitation recited in claim 73, supra. Because claim 73 appears to exclude the preferred ambodiment of the invention, a question arises as to whether the inventors had possession of an invention excluding the preferred embodiment at the time the application was filed. Therefore, upon return of this application to the examiner, the examiner should make a determination as to whether the negative limitation set forth in claim 73 violates the written description requirement of the first paragraph of 35 U.S.C. § 112 and whether claims 2-7, 9-17 and 73 should be rejected thereover. Conclusion For the foregoing reasons, the decision of the examiner is affirmed-in-part. 14Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007