Appeal No. 95-2063
Application 07/965,314
B
The examiner urges that the addition of the phrases “not to
exceed 10% by volume of the composition” and “not to exceed 5% by
volume of the composition,” to limit the volume of water present
in the SOG composition, are not supported by the specification as
originally filed and, therefore, constitute the addition of new
matter. Answer, p. 4.
In response the appellant points to the teachings of the
specification wherein (i) three different SOG compositions are
disclosed which comprise a maximum water content of 29.9%, 14.8%
and 8.3%, (specification, p. 4) and (ii) two precise SOG
compositions are disclosed which comprise a water content of 3.4%
and 3.6% (specification, p. 6). Brief, p. 9. According to the
appellant, the claimed water limitations of “less than 5% and
less than 10% are supported by Appellant’s more preferred
embodiment and by the working examples.” Brief, p. 12, last
para. We disagree.
Here, in reviewing the specification, we are unable
to find any factual basis which supports limitations to an SOG
composition having a water content wherein the upper limit is not
to exceed 5%, or 10%, by volume as described in claims 20 through
22. To the contrary, the specification discloses ranges wherein
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