Appeal No. 2002-0089
Application No. 09/331,647
1368, 1380, 58 USPQ2d 1508,1516-1517 (Fed. Cir. 2001); In re Petering, 301 F.2d 676, 682,
133 USPQ 275, 280 (CCPA 1962). Schambil teaches an emulsion having an oil component that
consists essentially of molecules selected from 50 to 100% by weight of wax esters (A1) and 0 to
50% by weight of a triglyceride (A2). (Schambil, p. 12, claim 1, p. 14, claim 3 and p. 15, claim
9). Thus, Schambil teaches that the oil component may: 1) contain a wax ester and a triglyceride;
or 2) contain a wax ester and no triglyceride. Schambil teaches such a small genus of species for
the oil component (A) that one skilled in the art would recognize that Schambil possessed both
the oil component having a triglyceride and an oil component having no triglyceride. Thus, we
hold that Schambil teaches the presence of the triglyceride for purposes of anticipation.
The appellant has stated that Schambil teaches, at best, 25 to 50% by weight of a wax
ester. (Brief, pages 3-4). The examiner, however, argues that Schambil teaches a final emulsion
having 12.5 to 50% wax ester. Schambil teaches that:
[A]n amount of water having a mass at least equal to the mass of the oil
component (A) are made into an emulsion with the aid of: 0.1 to 0.5 part by
weight - per part by weight of the oil component - of a primary emulsifier
component (B). . .”
(Schambil, p. 2, line 35 to p. 3, line 3). Thus, Schambil requires that one skilled in the art select
the appropriate proportions of the oil, water and emulsifier. A broadly described range of
proportions does not always anticipate a narrowly claimed range of proportions. The claimed
subject matter must be described with “sufficient specificity.” The examiner bears the burden of
proof. In this case, the examiner’s burden requires a full explanation for finding that Schambil
provides sufficient specificity for an emulsion having 30 to 40% wax ester. The methodology for
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