Ex parte DIEKHAUS et al. - Page 4




                 Appeal No. 1996-1288                                                                                                                   
                 Application No. 08/227,576                                                                                                             

                          Claim 24 is rejected under the second paragraph of 35                                                                         
                 U.S.C.  112 for failing to particularly point out and                                                                                 
                 distinctly claim the subject matter which the appellants                                                                               
                 regard as their invention.  According to the examiner, “[i]n                                                                           
                 claim 24, the word ‘stoichiometric’ implies a chemical                                                                                 
                 reaction, but it is unclear what the reaction is” (answer,                                                                             
                 page 4).                                                                                                                               
                          Finally, claims 2 through 6, 8 through 17, 19, 21 through                                                                     
                 25  and 27 through 32 are rejected under 35 U.S.C.  103 as3                                                                                                                                  
                 being unpatentable over Brunnmueller in view of Connelly and                                                                           
                 Bodenbenner.                                                                                                                           
                          For the reasons which follow, we cannot sustain any of                                                                        
                 the above noted rejections.                                                                                                            
                          The examiner has not clearly identified whether his                                                                           
                 section 112, first paragraph, rejection is based upon an                                                                               
                 enablement theory or a description theory.  Although his                                                                               
                 criticisms seem more closely related to the latter, the                                                                                

                          3Claims 21, 23 and 24 inappropriately depend from now                                                                         
                 cancelled claim 20.  In accordance with the appellants’                                                                                
                 indication on page 2 of the brief, we will treat these claims                                                                          
                 as though they depend from claim 31 for purposes of resolving                                                                          
                 the issues before us on this appeal.  However, in any further                                                                          
                 prosection that may occur, the inappropriate dependency of                                                                             
                 claims 21, 23 and 24 should be corrected.                                                                                              
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