Ex parte SLACK et al. - Page 3




          Appeal No. 95-0801                                                           
          Application 08/018,830                                                       


          first paragraph of 35 U.S.C. § 112:                                          

          Robin               4,412,073                 Oct. 25, 1983                  

               Claims 1 through 6 stand rejected under 35 U.S.C. § 112,                
          first paragraph, as the enablement of the specification is not               
          commensurate in scope with the claims (answer, page 1, last                  
          paragraph, and the paragraph bridging pages 2-3).  We reverse                
          this rejection for reasons which follow.                                     

                                       OPINION                                         
               The examiner states that appellants’ disclosure is                      
          enabling only for claims limited to catalyst component (a)(i)                
          containing a total of from about 1 to 36 carbon atoms,                       
          component (a)(ii) where the aromatic ring contains a total of                
          from 6 to 18 carbon atoms, and to component (b) containing                   
          from 1 to 4 hydroxyl groups and having about 1 to 18 carbon                  
          atoms (answer, paragraph bridging pages 2 and 3).  The                       
          examiner’s position is ?that the claims should be limited to                 
          the inclusion of the clearly defined species of compounds                    
          which the appellants have disclosed as being operative in a                  
          process for the preparation of a polyisocyanate having an                    

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