Appeal No. 95-2063
Application 07/965,314
the reasons set forth on p. 11 of the appellant’s brief.
Accordingly, without further elaboration, we adopt the
appellant’s reasoning and position as our own.
The examiner also urges that claim 12, subsection (c) is
inaccurate in the recitation of an upper limit of 85% with
respect to the volume of alcohol. According to the examiner if
85% by volume alcohol is present in combination with the
ingredients required in subsections (a) and (b), the total will
be greater than 100%. It is well settled that claims are not
analyzed in a vacuum but, rather, they should be read in light of
the teachings in the specification and the prior art, as they
would be interpreted by one of ordinary skill in the art. In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (Fed. Cir. 1971).
As discussed we above, one skilled in the art would have
recognized, based on simple mathematics, that exactly 85% by
volume of alcohol could not be used in the claimed process in
combination with the minimal, specified amounts of the additional
ingredients. Moreover, the examiner has overlooked the fact that
the upper limit of alcohol in the claim is approximately 85%. 2
2We point out that claim 12, subsection (a) is directed to
between approximately 15% to 22% by volume of TEOS, and
subsection (b) is directed to between approximately 0.2% to 1.3%
by volume of nitric acid. Thus, volumes of less than 15% and
8
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