Ex parte DIBIASE et al. - Page 14




          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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