Ex parte BIRMINGHAM - Page 5




          Appeal No. 94-0786                                                           
          Application 07/861,332                                                       


          dicyclopentadiene is combined with an auxiliary liquid (i.e., a              
          heat transfer fluid) prior to introduction into a reaction vessel            
          and Robota’s Example 1 embodiment wherein a 10:1 dicyclo-                    
          pentadiene/oil mixture is utilized.                                          



               Additionally, as stressed by appellant, the now claimed                 
          process recites the step of ?directly condensing? removed                    
          monomeric cyclopentadiene vapor to provide liquid monomer, which             
          claim language excludes the partial condensing step essential to             
          Robota’s process.  See Robota at column 3, lines 32 through 45               
          and column 3, line 42 and line 65 through 71.                                
               Finally, the now claimed process is further limited by                  
          ?wherein? clauses indicating that 98% to 100% of introduced                  
          molten dicyclopentadiene is converted to monomer of 97 to 100%               
          purity with negligible formation of high cyclopentadiene polymer             
          in the reaction vessel.  It is not apparent that the Oga process             
          is capable of meeting these claimed requirements.  See for                   
          example the data reported in Table 2 of Oga in the translation at            
          page 11.                                                                     
               In light of the above, we cannot sustain the examiner’s                 
          rejections of appealed process claims 10 through 12.  On the                 

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