Ex parte DIEKHAUS et al. - Page 5

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

          examiner has failed to carry his burden of establishing that                
          the rejection under consideration is proper under either                    
          theory.  In essence, we agree with the appellants that the                  
          original disclosure of the subject specification including the              
          disclosure relating to “other impurities” would have conveyed               
          to an artisan that the appellants had possession on their                   
          application filing date of a process for removal of compounds               
          which include unreacted compounds, namely, the claim 28                     
          “unsulfonated organic phosphorous compounds”.  In re Kaslow,                
          707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).                  
          Additionally, assuming the examiner’s concern regarding these               
          last mentioned compounds relates to the issue of enablement,                
          we point out that the examiner has failed to advance on this                
          appeal reasoning inconsistent with enablement as is his                     
          burden.  In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ                  
          561, 563 (CCPA 1982).                                                       
               In light of the foregoing, we cannot sustain the                       
          examiner’s section 112, first paragraph, rejection of claim                 
               We also cannot sustain the examiner’s section 112, second              
          paragraph, rejection of claim 24.  On the record before us,                 


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