Ex parte MORGAN - Page 7




         Appeal No. 1996-1158                                                      
         Application No. 08/077,599                                                


         The Cheng reference does not mention the claimed fuel saving              
         recited in step (d), which reads as follows:                              
                        carrying out the process of steps (a),                     
                   (b) and (c) so that the amount of fuel                          
                   utilized per pound of carbon black produced                     
                   by the process of steps (a), (b) and (c) is                     
                   less than the fuel utilized per pound of                        
                   carbon black to form the first carbon black                     
                   produced by the process of steps (a) and                        
                   (b). . .                                                        
              The dispositive question is, therefore, whether the                  
         amount of fuel utilized per pound of carbon black produced by             
         the process steps (a), (b) and (c) described in the Cheng                 
         reference is inherently less than the fuel utilized per pound             
         of carbon black produced by the process steps (a) and (b)                 
         described in the Cheng reference.  We answer this question in             
         the affirmative.                                                          
              As indicated supra, the Cheng reference describes, inter             
         alia, process steps identical to the claimed process steps                
         (a), (b) and (c).  These process steps, according to appellant            
         at pages 4 and 5 of the specification, would necessarily                  
         result in the fuel saving recited in step (d).  Specifically,             
         appellant states (specification, pages 4 and 5) that:                     



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