Appeal No. 95-0954
Application 08/058,092
that claim, i.e., “dissolving the substrate in water when the
fragrance has substantially volatilized” limits the method of
freshening air (answer, page 3). In the examiner’s view, the
freshening of the air is complete prior to the final step of
dissolving the substrate, and the final step is directed
toward a method of disposing of the substrate and is not
pertinent to freshening air (answer, page 6).
The test for whether a claim directed toward freshening
air complies with 35 U.S.C. § 112, second paragraph, is not
whether every step in the claim improves the freshness of the
air but, rather, whether the claim language is as precise as
the subject matter permits and if, when read in light of the
specification, the claim reasonably apprises those skilled in
the art both of the utilization and scope of the invention.
See Shatterproof Glass v. Libby-Owens Ford Co., 758 F.2d 613,
624, 225 USPQ 634, 641 (Fed. Cir. 1985). The examiner has set
forth no convincing reason as to why the language of
appellant’s claim 16 is not as precise as the subject matter
permits and, when read in light of the specification, does not
reasonably indicate to those of ordinary skill in the art the
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