Appeal No. 97-2554
Application No. 08/164,112
The results of tests on various surfactants are given in
Examples 1 to 3 on pages 13 to 17.
The Rejection
The rejection is based upon the examiner’s objection to
the specification (answer, page 3):
as failing to enable the breadth of the claims, that
is the use of certain surfactants within the claimed
HLB range would render the device inoperative. Not
all surfactants with an HLB less than 12 will be
effective to reduce urine odor. See M.P.E.P. §§
706.03(n) and 706.03(z) . [3]
According to the examiner (answer, pages 4 and 5; original
emphasis):
Applicant argues that the claims exclude those
surfactants that do not reduce urine odor but that
do have an HLB less than 12. See applicant’s brief
on page 3, lines 9-16. The examiner does not agree
with applicant’s arguments. In reference to claim
1, the claim requires a surfactant with an HLB less
than 12 in an amount effective to reduce urine odor.
The claim does not exclude those surfactants with an
HLB less than 12 that do not reduce urine odor. In
other words, applicant has claimed a surfactant with
an HLB less than 12 and has also claimed that it is
present in an amount effective to reduce urine odor.
This is not what applicant has disclosed in the
specification. What happens when the surfactant
used does not reduce urine odor? It will not matter
how much of the surfactant is present because it
3These sections have since been deleted, and appear to
be replaced by M.P.E.P. § 2164.08.
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