Appeal No. 1996-3469
Application No. 08/268,708
First, the examiner applies the wrong legal standard. A specification need not have
"verbatim basis" of the terms in the claims. "The claimed subject matter need not be described
in haec verba to satisfy the description requirement," In re Herschler, 591 F.2d 693, 701, 200
USPQ 711, 717 (CCPA 1979).
Second, the term "non-carbonated" is implicitly disclosed for the reasons stated by
appellants in their brief (p. 2). The specification (page 1, lines 12-21) contrasts "Carbonated
soft drink manufacturers who enjoy a relatively quick distribution . . ." and "beverage products
where the distribution and use cycle may extend to a period of several months . . ." The clear
implication is that "beverage products" are other than "carbonated soft drinks." Since this can
only mean non-carbonated beverages, the claimed invention has written descriptive support.
Claims 1, 2, 4-6, 8-12, and 14-20 are rejected under 35 U.S.C. ' 103 as
being unpatentable over Sakai and Wakabayashi in view of
Sabatura.
We feel compelled to point out the following defects
in examiner's position:
First, examiner states that "the claim now requires
a non-carbonated beverage [but that it] is not given
weight as it is considered new matter." Examiner's
Answer, p. 4. Simply because a limitation in a claim may
not comply with the written description requirement of 35
U.S.C. ' 112 does not mean examiner can ignore the
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