Ex parte GROVE - Page 4




          Appeal No. 96-3174                                                          
          Application 07/970,608                                                      


               a) claims 17 and 18, rejected under 35 U.S.C. § 112,                   
          second paragraph,                                                           
               b) claims 1-20, rejected under 35 U.S.C. § 112, first                  
          paragraph,                                                                  
               c) claims 1, 2, 5 and 7, rejected under 35 U.S.C. §                    
          102(b) as being anticipated by Maus, and                                    
               d) claims 3, 4, 6, and 8-20, rejected under 35 U.S.C. §                
          103 as being unpatentable over Maus.                                        


                  The 35 U.S.C. § 112, second paragraph, rejection                    
               In rejecting claim 17 under 35 U.S.C. § 112, second                    
          paragraph, the examiner considers that claim 17 is                          
          inconsistent with claim 10, from which it depends.                          
          Specifically, the examiner maintains that the injecting step                
          of claim 17 calling for injecting plasticized resin “to                     
          completely fill said pre-enlarged mold cavity” is inconsistent              
          with the injecting step of claim 10, which calls for injecting              
          into each pre-enlarged mold cavity a volume of plasticized                  
          resin “insufficient to fill each pre-enlarged cavity.”                      
               From our perspective, claim 17 does not merely impose a                
          further qualification on claim 10 by requiring that the                     
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