Ex parte BASIL et al. - Page 7




             Appeal No. 95-0808                                                                                   
             Application 08/048,866                                                                               


             formula recited in appellants’ claim 1.                                                              
                    Appellants argue that Basil does not disclose reacting                                        
             cerium oxide with tetraethylorthosilicate and adding the                                             
             reaction product to a partially hydrolyzed alkoxide (brief,                                          
             pages 5-6).  This argument is not well taken because these                                           
             steps are not required by appellants’ claim 1.  The claim                                            
             merely requires the presence of a partially hydrolyzed                                               
             alkoxide of the recited formula which, as stated above, can be                                       
             tetraethylorthosilicate, and the reaction product of cerium                                          
             oxide and tetraethylorthosilicate.  Thus, Basil’s Example III                                        
             anticipates appellants’ claim 1 if some of the                                                       
             tetraethylorthosilicate in that example reacts with at least                                         
             some of the cerium oxide.                                                                            




                    In Basil’s Example III, the mixture of cerium oxide and                                       
             tetraethylorthosilicate is stirred at 60EC for 2 hours.  In                                          
             the only example in appellants’ specification (page 6), the                                          
             mixture of tetraethylorthosilicate and cerium oxide is stirred                                       
             for 4 hours at room temperature.  Although the stirring time                                         
             in Basil’s Example III is less than that in appellants’                                              
                                                      -7-7                                                        





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