Appeal No. 95-3623
Application 07/714,407
0.03 to 3 wt% and 0.05 to 2 wt% (paper no. 15, filed November 29,
1993).
The examiner argues (answer, page 5):
The specification at page 10, lines 8-11 recites “the
surface active agent may be used in an amount of from
0.01 to 5.0% by weight, more preferably from 0.03 to 3%
by weight, most preferably from 0.05 to 2% by weight”;
but does not recite that an acetylenic alcohol based
surface active agent and a quaternary ammonium based
surface active agent are “collectively present” in the
amounts, as recited in the instant claims.
The limitation “said acetylenic alcohol surface
active agent and quaternary ammonium salt surface
active agent are collectively present in an amount ...”
(emphasis added) did not appear in the specification as
filed and therefore introduces a new concept and
violates the description requirement of the first
paragraph of 35 USC 112. (Ex parte Grasselli, 231 USPQ
393.)
The examiner acknowledges that appellants’ specification at
pages 5 to 6 provides written descriptive support for a
combination of an acetylenic alcohol surface active agent and a
quaternary ammonium salt surface active agent, but argues that
the specification does not provide a written description of a
developing solution wherein these two surface active agents
collectively are present in an amount of 0.01 to 5 wt% (answer,
page 7). The examiner also argues (answer, page 8) that
the criticality recited at page 10, lines 11-14 [of
appellants’ specification, i.e., that “[a]n amount of
the [surface active] agent smaller than 0.01% by weight
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