Appeal No. 97-2914
Application No. 08/448,060
discussed above, Kohl lists several drawbacks to the Ain situ calcination of limestone@ and the Aconcept
of combining fly ash particulate removal with the SO2 removal scrubber@ (p. 307, para. 4, through p.
309). Those drawbacks would further Ateach away@ from the
downstream use of particles. Prior art references must be considered in their entireties, i.e., as a whole,
including portions that would lead away from the claimed invention. See W.L. Gore & Associates, Inc.
v. Garlock, 721 F. 2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983), cert. den., 469 U.S. 851
(1984).
NEW GROUND OF REJECTION UNDER 37 CFR 1.196(b)
Pursuant to the provisions of 37 C.F.R. ' 1.196(b), we make the following new grounds of
rejection.
Claims 9-14 are rejected under 35 U.S.C. ' 112, second paragraph, as being indefinite.
Claim 1, lines 7 and 8, recites Aa particle size range larger than approximately 1.0-2.0 microns@,
but it is unclear whether the particles are larger than 1.0 micron or 2.0 micron.6 Clarification is needed.
For example, are particles having a size of 1.5 micron within or without the claims.
CONCLUSION
We reverse the rejection of claims 9-14.
This decision contains a new ground of rejection pursuant to 37 C.F.R. '
1.169(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53, 131, 53,
197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37
C.F.R. ' 1.169(b) provides that, AA new ground of rejection shall not be considered final for
6 Reference is made to lines 7 and 8 of claim 9 in the June 10, 1996 Amendment.
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