Appeal No. 1998-1176
Application No. 08/553,072
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶1
The examiner finds that there is no basis or support in
the original disclosure for the newly created ranges of
components (a) and (b) in claims 12 and 19 (Answer, pages 4
and 7-9). The examiner also finds that the range of claim 12
is not supported by the disclosure of Example 12 in the
specification, which the examiner finds to disclose that the
entire ranges now claimed in claim 12 will not result in
component (a) being soluble in component (b)(Answer, page 4).
The initial burden rests with the examiner of presenting
evidence or reasoning why persons of ordinary skill in the art
would not recognize in the original disclosure a description
of the invention as now defined by the claims. In re
Wertheim, 541 F.2d 257, 264, 191 USPQ 90, 97 (CCPA 1976). As
stated in Wertheim, “the question is whether, on the facts,
the PTO has presented sufficient reason to doubt that the
broader described range also describes the somewhat narrower
claimed range.” Wertheim, 541 F. 2d at 264, 191 USPQ at 98.
As quoted by the examiner (Answer, page 8), Wertheim states
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007