Ex parte MARKS et al. - Page 4




                 Appeal No. 1997-1732                                                                                                                   
                 Application No. 08/236,895                                                                                                             

                 of the remaining claims on appeal.  Our reasoning is set forth                                                                         
                 below.                                                                                                                                 
                          It is the examiner’s basic position that Sabatka                                                                              
                 discloses a solvent recovering method of the type defined by                                                                           
                 the independent claims on appeal except for the here claimed                                                                           
                 feature relating to use of a second or surrogate solvent but                                                                           
                 that Nelson discloses use of a steam-liquid mixture which                                                                              
                 corresponds to this claimed feature.  According to the                                                                                 
                 examiner, it would have been obvious for one with an ordinary                                                                          
                 level of skill in the art to provide the method of Sabatka                                                                             
                 with the steam-liquid mixture  feature of Nelson in order to2                                                                                  
                 obtain improved flowability, reduced viscosity and enhanced                                                                            
                 solvent recovery taught by Nelson (e.g., see lines 8 through                                                                           
                 23 in column 4).                                                                                                                       
                          In their brief, the appellants have not challenged with                                                                       
                 any reasonable specificity the examiner’s proposal to combine                                                                          
                 the teachings of Sabatka and Nelson.  Instead, the appellants                                                                          
                 argue that Nelson’s teaching does not correspond to the                                                                                
                 claimed feature under consideration.  In particular, it is the                                                                         

                          2Nelson also discloses using hydrocarbons such as methane                                                                     
                 or natural gas rather than steam (e.g., see lines 45 through                                                                           
                 53 in column 4).                                                                                                                       
                                                                           4                                                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007