Ex parte HUSTON et al. - Page 7




                     Appeal No. 1999-0172                                                                                                                                              
                     Application 08/334,733                                                                                                                                            


                     appellants and the examiner with regard to the merits of these                                                                                                    
                     rejections.3                                                                                                                                                      


                                                                                DISCUSSION                                                                                             


                     I. The appellants’ assertion of an earlier filing date benefit                                                                                                    
                     under 35 U.S.C.  120.                                                                                                                                            


                                The threshold issue in this appeal is whether the subject                                                                                              
                     matter recited in the claims at bar is entitled under 35                                                                                                          
                     U.S.C.   120 to the benefit of the December 10, 1991 filing                                                                                                      
                     date of parent application 07/804,368 as urged by the                                                                                                             
                     appellants (see, for example, pages 7 through 9 in the main                                                                                                       
                     brief).  If so, Mansell, Welles, Bickley and Alesio would not                                                                                                     
                     be prior art with respect to these claims, and the examiner’s                                                                                                     
                     reliance thereon to support the appealed rejections would be                                                                                                      


                                3 Although the final rejection (Paper No. 14) contained a                                                                                              
                     number of rejections in addition to those listed above, the                                                                                                       
                     examiner has since withdrawn all of the additional rejections                                                                                                     
                     (see page 3 in the substitute answer).  It is also noted that                                                                                                     
                     the version of claim 11 appearing in the appendix to the                                                                                                          
                     appellants’ main brief bears no resemblance to the claim 11                                                                                                       
                     which is actually of record.                                                                                                                                      
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