Appeal No. 1996-3826
Application 08/222,477
Claims 28 through 30, 33 through 35 and 41 through 45 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kawaai in view of Dubin; and
Claims 31 and 32 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kawaai in view of
Dubin, further in view of Morehouse.
We affirm the grounds of rejections based on Kawaai, Kawaai in view of Dubin and, with
respect to claim 32, Kawaai in view of Dubin, further in view of Morehouse. We reverse the ground of
rejection based on Kawaai in view of Morehouse and, with respect to claim 31, Kawaai in view of
Dubin, further in view of Morehouse. Accordingly, the decision of the examiner is affirmed-in-part.
Rather than reiterate the respective positions advanced by the examiner and appellant, we refer
to the examiner’s answer and to appellant’s brief for a complete exposition thereof.
Opinion
We begin our review of the application of the applied prior art to appealed product claims 1
through 3 and 6, method claims 13, 23, 24 and 36 and product-by-process claims 31 through 33 and
43 by determining the invention encompassed by these claims, mindful that the terms thereof must be
given the broadest reasonable interpretation consistent with appellant’s specification as it would be
interpreted by one of ordinary skill in this art. See In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989). The appealed claims encompass the claimed aqueous fuels of claims 1 through 3 and
product-by-process claims 31 through 33 and 43, the latter, of course, drawn to products, see In re
Thorpe, 777 F.2d 695, 697-98, 227 USPQ 964, 965-66 (Fed. Cir. 1985), and methods of making
the same in claims 13, 23, 24 and 36, which we have generally described above (see supra pp. 2-3).5
5 We observe that in claim 13, step “b)” specifies “combining . . . water with the mixture of step a and
. . . alcohol” and step “c)” specifies “combing the mixtures of steps a and b” (emphasis supplied), and
that claim 14, dependent on claim 13, specifies that “a mixture of water and alcohol are added to the
mixture of step a,” which mixing of mixtures is inconsistent. We suggest that any further prosecution of
claim 13, and claims dependent thereon, before the examiner include consideration of whether these
claims, and claims dependent thereon, comply with 35 U.S.C. § 112, second paragraph. However,
we find it is possible to make a reasonable, conditional interpretation of these claims consistent with the
disclosure in appellant’s specification that the fuel and emulsifier are mixed separately and then water
and alcohol are added thereto either separately or in admixture (e.g., page 3, lines 1-11). Such an
interpretation is adequate for the purpose of resolving patentability issues to avoid piecemeal appellate
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