Ex parte CHEN et al. - Page 19




          Appeal 97-1458                                                              
          Application 08/329,940                                                      

                         a.   C F NO sold as PF-5052 by 3M constitutes an             
                               5 11                                                   
                              enabling disclosure and                                 
                         b.   whether C F NO sold as PF-5052 by 3M can                
                                       5 11                                           
                              properly be characterized as a                          
                              "perfluoronitroalkane."4                                
          As to these two issues, the remand is for further proceedings               
          consisting with the views expressed in this opinion.                        
                    2.   The examiner's second 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:                                     
                         a.   C F NO sold as PF-5052 by 3M constitutes an             
                               5 11                                                   
                              enabling disclosure and                                 
                         b.   whether C F NO sold as PF-5052 by 3M can                
                                       5 11                                           
                              properly be characterized as a                          
                              "perfluoronitroalkane."                                 
          As to these two issues, the remand is for further proceedings               
          consisting with the views expressed in this opinion.                        


             There may be an element of whether certain claims are definite within the
          meaning of the second paragraph of 35 U.S.C. § 112 insofar as this issue is concerned.
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