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.
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