Appeal No. 95-2683
Application No. 07/883,912
17). The thrust of the examiner's rejection is that the
original specification provides an upper limit of 5% ethylene,
but the appealed claims encompass an unlimited range for the
amount of ethylene. On this point we agree with the reasoning
presented by appellants at pages 17 and 18 of the principal
Brief. Fatal to the examiner's rejection is the fact that the
appealed claims contain no language regarding the amount of
ethylene used in the polymerization process that is not
described in the original specification. For instance, the
appealed claims do not recite that the amount of ethylene is
in excess of 5%. While it can be argued that the appealed
claims encompass amounts of ethylene greater than 5%, it is
well settled that it is not the function of the claims to
specifically exclude possible inoperable substances or
ineffective reactant proportions. In re Dinh-Nguyen, 492 F.2d
856, 858-59, 181 USPQ 46, 48 (CCPA 1974); In re Anderson, 471
F.2d 1237, 1242, 176 USPQ 331, 334-35 (CCPA 1973). See also
In re Kamal, 398 F.2d 867,
872, 158 USPQ 320, 324 (CCPA 1968); and In re Sarett, 327 F.2d
1005, 1019, 140 USPQ 474, 486 (CCPA 1964). In our view, the
examiner's line of reasoning is more appropriate for a
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