Ex Parte HARD - Page 11



          Appeal No. 2000-1019                                                        
          Application No. 08/623,852                                                  

               for the use of the sulfuric acid solution to “render                   
               the one or more additional metal values insoluble” as                  
               is now instantly claimed.  The phrase “to render . . .                 
               metal value(s) insoluble” is taken to mean to                          
               precipitate metal values, and nowhere is there support                 
               for this in the sections pointed to in the                             
               specification above.  Instant pg. 3, lines 29-34                       
               supports precipitating UF4 but that only occurs when                   
               fluoride ion and uranium are present in the process,                   
               however the instant claims do not require either”                      
               (Answer, Paper No. 19, pages 5 through 6).                             
          We note that the language “to render a metal value insoluble”               
          and “being recovered and render the one or more additional values           
          insoluble” were added by amendment on February 26, 1998 (Paper              
          No. 9, page 1).                                                             
               In response to the examiner’s rejection, the appellants                
          argue that the                                                              
               language of claim 1, is supported throughout                           
               Appellant’s [sic, Appellants’] specification, e.g. at                  
               page 2, lines 16-28; at page 3, lines 13-28; and in the                
               Examples.  Accordingly, the Examiner’s final rejection                 
               of claims 1-13 as allegedly containing new matter was                  
               in error (Brief, Paper No. 16, page 8).                                
               After careful review of the examiner’s and the appellants’             
          arguments, we will sustain the examiner’s rejection.  The                   
          language “being recovered and render the one or more additional             
          metal values insoluble” suggests that more than one metal value             
          may be precipitated.  However, the specification only discloses             
          the precipitation of one metal, uranium.  Thus, the specification           

                                         11                                           




Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007