Ex parte YUAN - Page 15




          Appeal No. 1997-0461                                                         
          Application 08/267,683                                                       

          carcinogen. Thus, it would appear that using the                             
          "lubricant/coolant" of claims 28, 29 and 31 in a metal                       
          broaching operation which achieves high temperatures and                     
          pressures would require special care, handling and equipment.                
          We observe that there is no disclosure in appellant's                        
          specification on how to safely use appellant's claimed                       
          composition in a metal broaching operation. Accordingly, the                 
          examiner and appellant should consider whether appellant's                   
          disclosure satisfies the requirements of 35 U.S.C.  112,                    
          first paragraph, on how to use the claimed invention.                        
                                       SUMMARY                                         
               The decision of the examiner rejecting claims 23 through                
          27  and 30 is affirmed. The decision of the examiner rejecting               
          claims 28, 29 and 31 is reversed.                                            
               No time period for taking any subsequent action in                      
          connection with this appeal may be extended under 37 C.F.R.                  
           1.136(a).                                                                  

          AFFIRMED-IN-PART                                                             

                    ANDREW H. METZ              )                                      
                    Administrative Patent Judge )                                      
                                       )                                              

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