Appeal No. 2006-0151 Page 3
Application No. 09/753,381
Discussion
The examiner has rejected all of the pending claims under 35 U.S.C. § 112, first
paragraph, “as containing subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the inventor(s),
at the time of the application was filed, had possession of the claimed invention”
(Examiner’s Answer, page 3). We will reverse this rejection.
The language which gives rise to the examiner’s rejection is the recitation
“lecithins that have been enzymatically enriched in the amounts of lysophospholipids to
contain at least 5% by weight of lysophospholipids to the amount of lysophospholipids
plus phospholipids” (claim 1).2 Specifically, the examiner argues that “[t]he amount ‘at
least 5%’ is a range of 5-100%” (Examiner’s Answer, page 5), and represents a “new
concept” (i.e., “new matter”), which is “neither [ ] literal[ly] support[ed] in the as-filed
specification by way of generic disclosure,” nor by “specific examples” (id., page 3). The
examiner notes that the examples in the specification “use specific compositions” (id.), in
specific amounts, “not compositions containing unlimited amounts of lysophospholipids
as now recited in the phrase ‘at least’” (id.). Moreover, the examiner asserts that these
compositions are not representative of lysolecithins in general because “Lysoprin is . . .
‘enriched’ in lysophosphatidylcholine, not in any ‘lysophospholipid’” (id.), while “Bolec MT
. . . contain[s] only lysophosphatidic acid and lysophosphatidyl[ ]ethanolamine” (id.).
The examiner further asserts that “the results claimed at claims 10 and 13” (i.e.,
“degradation of neutral detergent fiber is increased by at least about 50%” (claim 10) and
2 This language was entered by the amendment filed July 19, 2004.
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