Appeal No. 1996-3847 Page 8
Application No. 08/162,063
the nonionic co-surfactant.” (col. 3, lines 45-47). Overton clearly contemplates adding both the linear
alkyl sulphate anionic surfactant and the nonionic surfactant to the sulphonic thickening surfactant.
Appellants argue that the ammonium salts disclosed in Overton are different from those claimed
(Brief, page 6). “During patent examination, the pending claims must be interpreted as broadly as their
terms reasonably allow." In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989). It is improper to read limitations from the specification into the claims. Id. See also In re
Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir. 2000). "Generally, particular
limitations or embodiments appearing in the specification will not be read into the claims." Enercon
GmbH v. ITC, 151 F.3d 1376, 1384, 47 USPQ2d 1725, 1731 (Fed. Cir. 1998)(quoting Loctite
Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed. Cir. 1985)). Claim 1 simply
recites that the composition is to contain “0.1% to 8% by weight of the total composition of ammonium
salts.” The Specification offers no definition of “ammonium salts” which would operate to exclude the
ammonium salt surfactants of Overton. The Examiner correctly declined to read the specific ammonium
salt compositions disclosed in the Specification into the claim.
Appellants further point out that the references do not discuss the problem solved by
Appellants. This is immaterial because a prima facie case of obviousness does not require that the
applied prior art recognize and address the specific problem upon which the inventor was working.
See In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901-1902 (Fed. Cir. 1990)(en banc), cert
denied, 500 U.S. 904 (1991). The discovery of an additional advantage by applicant does not make
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