Appeal No. 94-1549
Application 07/945,540
Rejection Under 35 U.S.C. § 112, Second Paragraph
As set forth at page 2 of the Final Office Action (Paper No. 5, May 13, 1993), the
examiner rejects these claims on the basis “[t]he language ‘effective amount’ absent a
[sic] indication of what it is effective for is indefinite.”
In our view, this rejection is based upon a misreading of claim 5. Claim 5 in
relevant part requires “an effective amount up to about 15% co-solvent.” Obviously, the
additive specified in this claim is to function as a co-solvent. As to what amounts would
be suitable as the “effective amount,” we point to Table 1 of the specification which sets
forth exemplary compositions which include co-solvents.
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
Rejection under 35 U.S.C. § 112, Fourth Paragraph
The basis for this rejection is that claim 1 on appeal uses the phrase “consisting
essentially of” while the remaining claims use the phrase “comprising” or “comprises.”
In the examiner’s view, it appears that appellants are attempting to modify the
restrictive phrase “consisting essentially of” in claim 1 in the subsequent claims by the
non-restrictive phrase “comprising.”
Appellants do not dispute the merits of this rejection. Rather, appellants argue
at page 2 of the Reply Brief (Paper No. 11, filed January 10, 1994) that it was the intent
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