Appeal No. 94-3359
Application 07/941,566
British Patent (IBM) 1,318,213 May 23, 19733
The appealed claims stand rejected as being
unpatentable:
(1) - Under 35 USC 101 as lacking
utility (claims 1 through 12).
(2) - Under 35 USC 112, first paragraph,
as being based on a disclosure which
fails to disclose how to make certain
compounds within the scope of the claims
(claims 1 through 12).
(3) - Under 35 USC 102(b), as lacking
novelty based on the disclosure of
Scullard (claims 1 through 4 and 6
through 12).
(4) - Under 35 USC 103, over Scullard,
alone, or, alternatively, over Scullard
in view of IBM, Hofman, Henzel and
Schuler (claims 1 through 4 and 6
through 12).
We reverse the rejections under 35 USC 101 and 35 USC
112, first paragraph. We affirm the rejection of claims 1
through 4, 7 and 9 through 12 under 35 USC 102. We affirm the
rejection of claims 1 through 4, 7 and 9 through 12 under 35 USC
103. We reverse the rejection of claims 6(3) and 8 under 35 USC
The examiner incorrectly denominates this reference as a3
"British Patent Application" in his answer at page 3. European
Patent Application 0,353,629 is the counterpart to and claims
prior benefit of U.S. Application Serial Number 229,372 which
ultimately issued as the Henzel reference relied on by the
examiner. Thus, the examiner has not separately relied on
European Application Serial Number 0,353,629 and we shall treat
all reference to said application as a reference to British
Patent 1,318,213.
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