Appeal No. 96-3689
Application 08/325,914
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ2d 1315, 1317 (Fed. Cir.
1988); In re Marshall, 578 F.2d 301, 304, 198 USPQ 344, 346 (CCPA 1978); In re Arkley, 455 F.2d
586, 587, 172 USPQ 524, 526 (CCPA 1972). Moreover, it is incumbent upon the examiner to identify
wherein each and every facet of the claimed invention is disclosed in the applied reference. Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485
(Fed. Cir. 1984). Here the examiner has failed to consider two features of the claimed subject matter,
namely, that the water and surfactant composition be “capable of exhibiting a liquid crystalline phase in
water at temperatures of about 25E C or higher” and that the coating composition contain “water and
surfactant in relative concentrations such that upon addition of water to the coating, the surfactant
undergoes a phase change.”
The meaning “crystalline phase” and “phase change” as set forth in the claims must be considered
in light of the specification as it would be interpreted by one of ordinary skill in the art. Gechter v.
Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Appellant discloses the
following at page 16 of the specification:
... Figure 3 [which is reproduced to the left
of this column] represents the viscosity in
milliPascal-seconds of the surfactant ammonium
laureth sulfate, of the structural formula C H -
12 25
Ö ¾
(OCH CH ) OSO NH , in water at varying2 2 2 3 4
concentrations in percent by weight of the surfac-
tant in the solution at a fixed temperature of about
-4-
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