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 11Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 NextLast modified: November 3, 2007