Appeal 97-1458
Application 08/329,940
perfluorooctane, p-chlorotrifluorotoluene or "their mixtures"
(col. 2, line 56). Applicants maintain that there is no
teaching to use a mixture. They are wrong--Geiger expressly
describes mixtures. Applicants maintain that there is no
teaching as to what proportions of the solvents would be used
in a mixture. They are wrong--Geiger expressly describes the
conditions for making mixtures, i.e., all solvents in a
mixture should boil either above or below cyanuric chloride
(col. 3, lines 3-5). But, applicants are clearly correct when
they argue that there is no teaching, suggestion, motivation
or reason to mix the solvents in proportions which result in a
single phase mixture. Because there is no teaching,
suggestion, motivation or reason to mix the solvents in
proportions which result in a single phase mixture, the
examiner's rejection cannot be sustained.
C. Decision
1. The examiner's first rejection of claims 1-20
under the first paragraph of 35 U.S.C. § 112 is reversed as to
claims 5-8, 10-11, 14, and 17-20 and is vacated and remanded
as to claims 1-4, 9, 12-13 and 15-16 to the extent the
rejection raises the issues of whether:
- 18 -
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007