Appeal No. 1998-1176
Application No. 08/553,072
“[w]here it is clear, for instance, that the broad described
range pertains to a different invention than the narrower (and
subsumed) claimed range, then the broader range does not
describe the narrower range. [Citations omitted].” Wertheim,
541 F.2d at 265, 191 USPQ at 98. We determine that the
examiner has not met this initial burden merely by pointing
out that the ranges now claimed are subsumed within the
originally disclosed ranges but some endpoints do not have
literal basis in the original disclosure (see the Answer,
pages 4 and 7-9). The examiner has not shown that the
different ranges pertain to different inventions or that the
new endpoints are alleged to be critical. Appellant has
amended the original ranges, not in an attempt to avoid prior
art or allege criticality by a showing of unexpected results,3
but apparently only to make the ranges of the required
components (a) and (b) equal 100% by weight. 4
3See In re Johnson, 558 F.2d 1008, 1018-19, 194 USPQ 187,
196 (CCPA 1977).
4For example, the upper limit of the UV agent in claim 12
is 45% by weight while the lower limit of the NMP solvent is
55% by weight. We note that original claim 12 contained the
transitional term “comprising” leaving the claims open to
unrecited ingredients while claims 12 and 19 now recite
7
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