Ex parte NOBUAKI MATSUDA et al. - Page 3

             Appeal No. 95-3623                                                                                   
             Application 07/714,407                                                                               

             0.03 to 3 wt% and 0.05 to 2 wt% (paper no. 15, filed November 29,                                    
                    The examiner argues (answer, page 5):                                                         
                    The specification at page 10, lines 8-11 recites “the                                         
                    surface active agent may be used in an amount of from                                         
                    0.01 to 5.0% by weight, more preferably from 0.03 to 3%                                       
                    by weight, most preferably from 0.05 to 2% by weight”;                                        
                    but does not recite that an acetylenic alcohol based                                          
                    surface active agent and a quaternary ammonium based                                          
                    surface active agent are “collectively present” in the                                        
                    amounts, as recited in the instant claims.                                                    
                          The limitation “said acetylenic alcohol surface                                         
                    active agent and quaternary ammonium salt surface                                             
                    active agent are collectively present in an amount ...”                                       
                    (emphasis added) did not appear in the specification as                                       
                    filed and therefore introduces a new concept and                                              
                    violates the description requirement of the first                                             
                    paragraph of 35 USC 112. (Ex parte Grasselli, 231 USPQ                                        
                    The examiner acknowledges that appellants’ specification at                                   
             pages 5 to 6 provides written descriptive support for a                                              
             combination of an acetylenic alcohol surface active agent and a                                      
             quaternary ammonium salt surface active agent, but argues that                                       
             the specification does not provide a written description of a                                        
             developing solution wherein these two surface active agents                                          
             collectively are present in an amount of 0.01 to 5 wt% (answer,                                      
             page 7).  The examiner also argues (answer, page 8) that                                             
                    the criticality recited at page 10, lines 11-14 [of                                           
                    appellants’ specification, i.e., that “[a]n amount of                                         
                    the [surface active] agent smaller than 0.01% by weight                                       


Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007