Appeal No. 94-3184
Application 07/924,828
We agree with appellants that the specification supports the
lower limit of "about 3 . . .% by weight water" recited in claim
5. The specification expressly states that "water will be
present in an amount . . . preferably in the range of from about
3 to about 8 percent-by-weight" (emphasis added). The examiner
has failed to establish that the broadly described range of "less
than about 10 percent-by-weight" water defines a different
invention than a composition defined by claim 5 having at least
"about 3 . . . % by weight water." See In re Wertheim, 541 F.2d4
257, 265, 191 USPQ 90, 98 (CCPA 1976) ("in light of the
description of the invention as employing solids contents within
the range of 25-60% along with specific embodiments of 36% and
50%, we are of the opinion that, as a factual matter, persons
skilled in the art would consider processes employing a 35-60%
solids content range to be part of appellants' invention").
Rejection under 35 U.S.C. § 112, second paragraph
Claim 5 is rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. The examiner maintains that the phrase
It would appear that the examiner also agrees that the specification4
provides support for the lower limit claimed. See Answer, p.5 ("However, the
Examiner maintain the position that appellant has basis for the critical range of
'3 to 8% by weight water' and a range for less than 10% by weight water'.
However, there is not support for the upper 10% range.").
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