Appeal No. 2005-1459
Application No. 09/950,612
D. Other Issues
In the event of further or continuing prosecution, the
examiner should reconsider the withdrawal of the rejection of
claims 2, 3, 5 and 6 under section 112, second paragraph (see the
Answer, page 5, paragraph (11)), since the term “abrasive
mixture” does not have antecedent basis in independent claim 1 on
appeal (abrasive slurry does have antecedent basis but “mixture”
does not)(italics added). The examiner and appellants should
also consider the patentability of any claimed subject matter in
light of the admitted prior art on page 5 of the specification.
The examiner and appellants also should consider the
patentability of claim 4 under section 112, paragraphs one and
two, since appellants agree with the examiner that the ceria
obtained from Nyacol is subject to change (Brief, page 14) and
thus the scope of the claim, as well as how to make and use the
invention, may not be ascertained by one of ordinary skill in
this art. Finally, the examiner and appellants should review the
consistency of the transitional phrases used in claims 1-6,
keeping in mind the different scope given to “consists
essentially of” (claims 1 and 6), “consists of” (claims 3 and 4),
and “comprises” (claims 2 and 5). See Davis, supra.
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