Appeal No. 1999-0959
Application No. 08/415,166
The examiner rejected all of the claims on the basis that the specification does
not adequately describe the concentration ranges recited in the claims:
Claim 5 at line 3 recites “25-30 mmol/l”. There is no support in the
specification for such a limitation. The specification sho ws support
. . . for only the range 25-50 mmol/l. The new range could not be
found in the specification as filed. . . .
Similarly in claim 5, line 3, “1-7 mmol/l” of EDTA could not be found
in the specification. Page 5, lines 18-19, for instance does not
show 7 mmol/l, it shows 1 -20, preferably 5[ ]mmol/l. Examples
show 5 mmol/l.
Claim 21 also recites “30 mmol/l” of calcium ions and “7 mmol/l” of
chelating agent. And, as discussed above for claims 5 and 21 [sic],
there is no support for these numbers in the specification.
Examiner’s Answer, pages 3-4.
Appellants argue that the specification discloses that calcium ions and
chelating agents may be used at concentrations of 1 -50 mM and 1-10 mM,
respectively. Appellants argue that these disclosures provide an adequate
description of the claimed process because the broader concentration ranges
recited in the specification show possession of the narrower ranges recited in the
claims. Appellants cite several cases in support of their position, including In re
Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), and In re Blaser, 556 F.2d
534, 194 USPQ 122 (CCPA 1977).
We agree with Appellants that the examiner’s position conflicts with
Wertheim and Blaser. The Wertheim court stated that the issue in a case like
this is
whether the invention appellants seek to protect by their claims is
part of the invention that appellants have described as theirs in the
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