Ex parte RAO - Page 4




            Appeal No: 1997-1820                                                                         
            Application No: 08/313,941                                                                   
                  depositing said metal thereon; said treatment of the                                   
                  carbon with acid being such that after said deposit                                    
                  of metal, the catalyst employed for said                                               
                  hydrogenolysis contains between .1 and 10 percent by                                   
                  weight of said metal, less than about 200 ppm                                          
                  phosphorus and less than about 200 ppm sulfur.                                         
                  From the language of the claims it is unclear whether the                              
            catalyst is the metal itself which is then placed on a carbon                                
            support or whether the catalyst is the combination of the                                    
            metal and the carbon support.  Since it is clear from                                        
            applicant's disclosure that inorganic constituents such as                                   
            sulfur and phosphorus are removed from the carbon support and                                
            not the metal                                                                                
            (see, e.g., Paper 1 at 6-8), we interpret the "catalyst"                                     
            referred to in the claims as including both the metal and the                                
            carbon support.                                                                              
                  Applicant states that claims 1-5 and 9-13 stand or fall                                
            together (Paper 31 (App. Br.) at 10-11).  Applicant's                                        
            arguments address the limitations of each of the remaining                                   
            claims separately.                                                                           






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