Appeal No. 96-3906
Application No. 08/038,588
DISCUSSION
Initially, we note that applicants proffered an amendment
after Final Rejection on August 17, 1995 (Paper No. 12). The
examiner denied entry of that amendment in the Advisory Action
mailed August 30, 1995 (Paper No. 13). Therefore, the
examiner's reference to claim language "now claimed in the
amendment after final" makes little sense (Examiner's Answer,
page 8, lines 1 and 2). A correct copy of claim 1 on appeal
is reproduced supra.
Respecting the rejection of claims 1, 2 and 4 through 6
under 35 U.S.C. § 112, second paragraph, the examiner states
that reciting "an effective amount" in claim 1 is indefinite
because "the claim fails to state the function which is to be
achieved by using said an effective amount" (Examiner's
Answer, page 3, third paragraph). This rejection is
manifestly untenable. Pending claims in a patent application
are read, not in a vacuum, but rather in light of the
supporting specification. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971). Here, it is abundantly
clear from the specification that "an effective amount" refers
to an amount of the aqueous solution effective to clean the
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