Appeal No. 95-2063
Application 07/965,314
nitric acid, that the volume of alcohol could be no greater than
approximately 85% by volume. One skilled in the art would have
arrived at this realization by means of simple mathematics, and
understood that it was not physically possible to have an upper
limit of 90% by volume of alcohol. That is, one of skilled in
the art would have recognized that an SOG composition cannot
contain the lowest claimed limit of TEOS (15% by volume), the
lowest claimed limit of nitric acid (0.2% by volume) and the
maximum claimed limit of alcohol (90% by volume) because the
total contents would exceed 100%. Accordingly, we find, as a
factual matter, that the specification inherently discloses an
upper limit of approximately 85% by volume alcohol and that
persons skilled in the art upon reading the specification would
have understood the alcohol content of the present invention to
be approximately 70% to 85% by volume. In re Wertheim, 541 F.2d
at 265, 191 USPQ at 98 (“[T]he invention claimed does not have to
be described in ipsis verbis in order to satisfy the [written]
description requirement of § 112.”)
Accordingly, Rejection 1, with respect to claims 12, 13 and
16 is reversed.
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