Appeal No. 96-3906
Application No. 08/038,588
page 8, lines 1 through 5. It is the examiner's burden, in
setting forth a rejection under 35 U.S.C. § 112, second
paragraph, to explain why the specification does not conclude
with one or more claims particularly pointing out and
distinctly claiming the subject matter which appellants regard
as their invention. The examiner has not satisfied that
burden here. This rejection is reversed.
Again, in setting forth the rejection of claims 1, 2 and
4 through 6 under 35 U.S.C. § 112, first paragraph, the
examiner has the burden of establishing that the original
specification does not provide written descriptive support for
the invention now claimed and that the claims are based on a
non-enabling disclosure. Again, the examiner has not
satisfied that burden. With respect to written descriptive
support, the examiner argues that the original specification
does not support the recitation "preparing metal surfaces for
the application of paint" (Examiner's Answer, paragraph
bridging pages 3 and 4). The argument lacks merit. The
entire thrust of the original specification relates to
cleaning metal surfaces and preparing same for the application
of paint, using appellants' aqueous cleaning solution. With
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