Appeal No. 1999-0959
Application No. 08/415,166
specification. That what appellants claim as patentable to them is
less than what they describe as their invention is not conclusive if
their specification also reasonably describes that which they do
claim. Inventions are constantly made which turn out not to be
patentable, and applicants frequently discover during the course of
prosecution that only a part of what they invented and originally
claimed is patentable.
Wertheim, 541 F.2d at 263, 191 USPQ at 97 (emphasis in original).
In Wertheim, the relevant claim limitation recited “between 35% to 60%”
by weight of coffee solids. Id. at 262, 191 USPQ at 96. The specification recited
a range of 25% to 60% and exemplified processes using 36% and 50% solids.
See id. The court concluded that
[i]]n the context of this invention, 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. . . . The PTO has done nothing more
than argue lack of literal support, which is not enough.
Id. at 265, 191 USPQ at 98 (emphasis in original).
Similarly, in Blaser the claims recited “heating the reaction blend . . .
obtained[] after completing of said mixing to 80° C to 200° C.” Blaser, 556 F.2d
at 536, 194 USPQ at 125. The specification disclosed initially mixing the starting
materials (at temperatures of up to 80° C) and then heating the reaction blend to
temperatures between 60° C and 200° C. See id. The court framed the issue as
“whether the disclosed range of 60° C to 200° C in [the specification] supports
the recitation of 80° C to 200° C in the claims on appeal,” id., and concluded that
it did:
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