Appeal No. 1999-1164
Application No. 08/715,559
As correctly argued by the appellants in the brief and reply brief, even if the applied
references were combined in the manner proposed by the examiner such that Herrmann’s
isopropanol/aliphatic hydrocarbon mixtures were used as the cleaning fluid in Fuller’s
method, the consequent method resulting from this combination would not correspond to
the appellants’ claimed method. This is because, notwithstanding the examiner’s
previously mentioned “holding”, the isopropanol non-solvent of Herrmann cannot be
regarded as “providing mechanical lubrication” in accordance with the here claimed
method. In this regard, we reiterate the appellants’ point that their specification on page
15 clearly reflects that isopropanol, while a non-solvent, does not provide mechanical
lubrication in the context of the here claimed invention. For this reason, the
isopropanol non-solvent must be provided with a lubricating non-solvent such as glycols,
glycol ethers and phthalate esters (see lines 8-19 on specification page 15 as well as
appealed claims 15-18).
In short, the examiner has improperly interpreted appealed claim 1 as
encompassing isopropanol as a non-solvent which provides mechanical lubrication.
Plainly, such an interpretation is improper because it is inconsistent with the appellants’
specification disclosure. We here remind the examiner that, while application claims are
to be given their broadest reasonable interpretation, this interpretation must be
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