Ex parte RAO et al. - Page 2




                 Appeal No. 1996-0683                                                                                                                   
                 Application 08/116,938                                                                                                                 


                          Pursuant to the restriction requirement set forth by the                                                                      
                 examiner in the Office action dated January 24, 1994 (Paper                                                                            
                 No. 4), appellants elected one of the species recited in claim                                                                         
                 1 (the Response dated February 23, 1994, Paper No. 5).   This                                    1                                     
                 species is specifically defined in claim 7 which is reproduced                                                                         
                 below:                                                                                                                                 
                          7.       The compound of Claim 1 which is CF CF CH CF CF .                                                                    
                                                                                                  3   2    2    2   3                                   
                          The prior art references of record relied upon by the                                                                         
                 examiner are:                                                                                                                          
                 Zhanxun C. et al. (Zhanxun I), “Esca Characterization of                                                                               
                 Plasma-Polymerized Tetrafluoroethylene (I),” Adv. Low-Temp.                                                                            
                 Plasma Chem. Technol. Appl., 2, pp. 265-273 (1988).                                                                                    
                 Zhanxun C. et al. (Zhanxun II), “Esca Characterization of                                                                              
                 Plasma-Polymerized Tetrafluoroethylene (I),” 4th Proc. Annual.                                                                         
                 Int. Conf. Plasma Chem. Technol., pp. 173-179 (1989).                                                                                  
                          The references of record relied upon by appellants are:                                                                       
                 Miller, W. T. et al. (Miller), “Substitution and Addition                                                                              
                 Reactions of the Fluoröölefins: IV.  Reactions of Fluoride Ion                                                                         

                          1Appellants request that “upon allowance of Claim 1,                                                                          
                 Claims 2 through 6 and 8 be also allowed as [they recite]                                                                              
                 species of the Claim 1 invention...”  See Brief, page 5.  This                                                                         
                 request is inappropriate since claims 2 through 6 and 8 are                                                                            
                 not properly before us.  Note also that our review is limited                                                                          
                 to the propriety of the examiner’s rejection with respect to                                                                           
                 the elected species recited in claim 1, i.e., claim 7.  The                                                                            
                 remaining non-elected species recited in claim 1 are also not                                                                          
                 properly before us.                                                                                                                    
                                                                         -2-                                                                            





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