Appeal No. 1998-1440 Page 5
Application No. 08/368,452
[C]laims 5-9 and 11-16 depend on a method claim and
as such should further define the method. However,
the claims as written, there is no step that further
defines the method from which the claims depended
on. What these claims state are conclusions to a
finish [sic] method process. Thus, they do not
clearly further define the limitation of the method
steps set forth by the claim from which they
depended on.
(Examiner's Answer at 6.) The appellants argue, "Appellants
have clearly written a preamble to their claims. There is
nothing, even remotely, in Title 35 of the United States Code
that suggests patent claims cannot have preambles ...."
(Appeal Br. at 8.)
The examiner fails to show that dependent claims 5-9 and
11-16 do not further define independent claim 4. To the
contrary, when read in light of the specification, one skilled
in the art would understand that each dependent claim
specifies a further limitation of the subject matter of the
independent claim. While claim 4 specifies in pertinent part
"cold deionized water," for example, claim 5 further specifies
that the cold water "is at a temperature of about 4°C." While
claim 4 specifies in pertinent part "a time period of at least
about six (6) hours," for another example, claim 6 further
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