Appeal No. 1997-2376
Application 08/199,863
composition has a particle size of about 5.0 to about 1000.0
Fm and contains about 2.0 to about 40.0 wt% of encapsulated
water based on the total of the composition. The examiner has
not pointed out, and it is not apparent, where these
limitations are found in any claim of Sharma.
The examiner argues that even if appellant’s claimed
invention is not an obvious variant over the claims of Sharma,
appellant’s claimed invention would have been obvious over the
claims of Sharma coupled with Sharma’s disclosure (answer,
page 4). In support of this argument the examiner relies upon
In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). The
examiner, however, does not explain, and it is not apparent,
why Schneller supports the examiner’s position.
When an examiner makes an obviousness-type double
patenting rejection, the examiner may use the patent’s
specification as a dictionary to determine the meaning of
terms in the patent’s claims. See In re Vogel, 422 F.2d 438,
441, 164 USPQ 619, 621-22 (CCPA 1970). The disclosure of the
patent, however, may not be used as though it were prior art.
See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972
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