Appeal No. 1996-0941
Application 08/091,421
Paper No. 13). Because “aluminous cement”, which is the only3
term objected to by the examiner, does not appear in claim 14,
we reverse the rejection of this claim under 35 U.S.C. § 112,
first paragraph.
As for claims 8-13 and 15-26, the examiner argues that
the disclosures in Barnes that typical high alumina cements
include 37-41% alumina (Table 2, page 377), and that aluminous
cements containing from below 40% to over 80% alumina (page
429) are used, indicate that high alumina cement is a specific
type of aluminous cement (answer, pages 7-8). Appellant
argues that these two passages are not contradictory (reply
brief, page 3), and the examiner provides no explanation as to
why Barnes’ teaching that high alumina cements typically
3“Do Not Enter” is written in the margin of the amendment
and is initialed, apparently by the examiner or his
supervisor. Also, the examiner stated in an advisory action
(mailed October 27, 1994, paper no. 13) that the amendment
will not be entered, and stated in the examiner’s answer (page
6) that it has not been entered. This amendment, however, has
been clerically entered. Upon return of the application to
the examiner, the discrepancy between the instruction not to
enter the amendment and the entry of the amendment should by
resolved. Contrary to appellant’s argument (reply brief,
pages 1-2), denial of entry of an amendment is only a
petitionable matter, not an appealable matter. See Manual of
Patent Examining Procedure § 1002.02(c) (7th ed., July 1998);
Ex parte Des Granges, 162 USPQ 379, 380 (Bd. App. 1968).
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