Ex parte CATES - Page 4




          Appeal No. 1997-0221                                                        
          Application 08/248,496                                                      


          follow.  We also remand this application to the examiner for                
          appropriate action as noted below.                                          
                                                                                     
                                       OPINION                                        
               A.  The Rejection under § 112, ¶1                                      
               The examiner states that “[i]n claims 3 and 4, it is not               
          clear if there is support for the limitation that there is                  
          less than 1% of each of the specified minerals.”  (Answer,                  
          page 4).  The examiner further states that it is “ambiguous”                
          as to whether the total of all elements listed in these claims              
          is less than 1% or if each element is present in an amount                  
          less than 1% (id.).  The examiner also questions the support                
          for the amendments to claim 5 (id.).                                        
               Appellant argues that the examiner admits that the                     
          specification appears to support either interpretation of the               
          amounts of minerals, and thus there is support for the subject              
          matter of claims 3-6 (Reply Brief, page 1).                                 
               We presume that the examiner’s rejection for “fails to                 
          provide support” is premised on the “written description of                 
          the invention” requirement of the first paragraph of 35 U.S.C.              
          § 112.  See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19              

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