Appeal No. 1997-2745 Page 5
Application No. 08/212,175
The rejection of claims 2 and 4 through 21 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Gipp and Stevens is reversed.
OTHER ISSUE
One further matter warrants attention.
On return of this application to the examining corps, we recommend that the
examiner reevaluate the patentability of applicants’ composition claims in light of
Stevens considered alone. In this regard, we emphasis that (1) independent claim 21 is
drawn to a composition, not to a process for removing wax from a wax-embedded
biological tissue specimen or to a dewaxing kit, and (2) the “intended use” language in
claim 21 does not constitute a claim limitation. The language “for removing wax from a
wax-embedded biological tissue specimen” and “which composition removes wax from
the tissue specimen” sets forth the intended use of applicants’ composition but does not
place a limitation on that composition or serve to distinguish that composition from the
prior art. As stated in the Appeal Brief (Paper No. 19), page 5, last paragraph,
“[a]pplicants acknowledge that a statement of intended purpose does not confer
patentability on an otherwise unpatentable composition.” See In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) (“the discovery of a new property or
use of previously known composition, even when that property and use are unobvious
from the prior art, cannot impart patentability to claims to the known composition”); In re
Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974) (court referred to
terms in the claims which “merely set forth the intended use for, or a property inherent
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