Appeal No. 1998-1247
Application No. 08/445,165
demonstrated how one specific combination appears to attain enhanced activity when
formulated according to the instant application. That the activity of one specific
combination of ingredients appears enhanced when formulated according to the instant
application does not appear to provide support for any unexpected activity when other
ingredients are used in said formulation(s).” (Answer, p. 3).
The rejection before us appears to be premised upon nothing more than a concern
over the breadth of the claims. It appears that the Examiner would limit the appealed
claim coverage to water dispersible granules containing isoproturon and
fluoroglycofenethyl. It has long been established, however, that to provide effective
incentives, claims must adequately protect inventors. Therefore, to demand that the first
to disclose shall limit his claims to what they have found will work would not serve the
constitutional purpose of promoting progress in the useful arts. In re Goffe, 542 F.2d
564, 567, 191 USPQ 429, 431 (CCPA 1976).
In light of the foregoing, the rejection of claims 17 and 20 to 22 under § 112, first
paragraph is reversed.
The Rejection under 35 U.S.C. § 112, Second Paragraph
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