Ex parte MAZZOLA - Page 5

          Appeal No. 1997-3350                                                        
          Application No. 08/522,164                                                  

          (p. 10), appellant's claims require inclusion of PEG in an                  
          amount of 0.25-12% by weight based on the composition as a                  
          whole.  The examiner then goes on to conclude that "Boucher                 
          has a polyethylene [sic:PEG] content of 0.58-3.4% by weight                 
          which is within the range of the polyethylene glycol required               
          by the instant application".  The examiner does not explain                 
          where he obtained these figures in Boucher or how he derived                
          them.  Moreover, the examiner has failed to explain why any of              
          the specific PEG percentages given in the Boucher examples                  
          would fall within the scope of appellant's claimed range,                   
          based on surfactant weight, even if the Boucher percentages                 
          happen to fall within a range calculated based upon the                     
          composition as a whole.                                                     
               In view of the foregoing, we remand the application to                 
          the examiner and require that he take appropriate action                    
          consistent with current examining practice and procedure to                 
          resolve the deficiencies noted above with respect to the                    
          question of obviousness relating to PEG content.  The examiner              
          is further required to communicate his findings on this issue               
          to appellant for appropriate response, and if appellant                     
          responds, to further respond as necessary via a supplemental                

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