Ex parte HUBBELL - Page 3




          Appeal No. 94-3990                                                           
          Application No. 08/038,033                                                   


               Appellant's claimed invention is directed to a method of                
          repairing, or touching up, a conversion coating comprising                   
          chromic acid and cyanide using an applicator, such as "a                     
          well-known conventional 'felt tip' type marking pen" (page 2                 
          of specification), to dispense additional conversion coat                    
          solution to a damaged, or scratched, initial conversion                      
          coating.  According to appellant, "[t]he present method                      
          minimizes waste and worker exposure to toxic chemicals in the                
          chromate conversion solution" (page 1 of Brief).                             
              Appellant submits at page 2 of the Brief that "[t]he                    
          rejected claims stand or fall together."  Accordingly,                       
          regarding the examiner's rejection of claims 16-20 under                     
          35 U.S.C. § 103, all the appealed claims stand or fall                       
          together with claim 16.                                                      
               Appealed claims 19 and 20 stand rejected under 35 U.S.C.                
          § 112, first paragraph, for being based upon a specification                 
          that does not provide original, descriptive support for the                  
          claimed subject matter.  Claim 19 stands rejected under                      
          35 U.S.C. § 112, second paragraph.  In addition, appealed                    
          claims 16-20 stand rejected under 35 U.S.C. § 103 as being                   



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