Ex parte KEASLING et al. - Page 5




            Appeal No. 1997-2755                                                                              
            Application 08/311,426                                                                            



            dehalogenated as a result of performing the method is inadequate.  Mere conclusions are           
            unacceptable.                                                                                     
                   To the extent the examiner is concerned that the claims might [eb bure?]                   
            “inoperable embodiments,” we refer to Atlas Powder Co. v. E.I. Du Pont De Nemours &               
            Co., 750 F.2d 1569, 1576-77, 224 USPQ 409 (Fed. Cir. 1984) when the   “ Even if some              
            of the claimed combinations were inoperative, the claims are not necessarily invalid. ‘It is      
            not a function of the claims to specifically exclude possible inoperative substances.’            
            In re Dinh-Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974).”                            
                   For the above reasons, we reverse the examiner’s rejection under 35 U.S.C. 112,           
            first paragraph.                                                                                  
            3. PRIOR ART REJECTION                                                                            
                   The rejection of the claims under 35 U.S.C. 103 using the reference to Fathepure          
            is premised upon the examiner’s belief that it would have been obvious to one of ordinary         
            skill in the art at the time the invention was made to perform the method disclosed by            
            Fathepure in situ since Fathepure suggests the feasibility of in situ degradation by the          
            same method as recited in the claims on appeal.                                                   
                   When the claims on appeal are interpreted as set forth above in Section No. 1, the         
            examiner’s rejection under 35 U.S.C. 103 falls apart since the claims clearly require the        
            complete reductive dehalogenation of at least a portion of the organic halide in the              

                                                      5                                                       





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

Last modified: November 3, 2007