Appeal No. 1999-0959
Application No. 08/415,166
Appellants rely on the rationale of In re Wertheim, supra, as “clearly
applicable here.” Appellants urge that if a disclosure of 25-60%
solids content taught those skilled in the art that 35-60% was part of
the invention in Wertheim, although the latter range was not
expressly mentioned therein, then appellants’ disclosure of 60° C to
200° C in [the specification] would likewise teach 80° C to 200° C
as part of appellants’ invention. We agree with appellants that
Wertheim is controlling on this point.
Id.
In the present case, the specification discloses use of calcium ions at a
concentration of 1 -50 mM and use of chelating agents at a concentration of 1-10
mM. See page 4, lines 28-29, and page 5, lines 17-19. The combination of 25
mM calcium and 5 mM EDTA (chelating agent) is disclosed to be “particularly
suitable.” Page 5, lines 20-21. The claims recite calcium at 1-30 mM (claims 3,
6-8, 11-18, and 21) or 25-30 mM (claim 5), and a chelating agent at 1 -7 mM (all
but claims 20 and 221).
Thus, as in Wertheim, the specification discloses a broader range that
encompasses the claimed range and expresses a preference for one or more
specific values within the claimed range. Under the rationale of Wertheim and
Blaser, the instant specification adequately describes the ranges recited in the
claims on appeal. That is, the specification reasonably conveys to the skilled
artisan that Appellants had possession, at the time the application was filed, of
the invention now claimed. Such a disclosure satisfies the written description
1 Claim 22 is limited to 25 mM calcium and 5 mM chelating agent, both of which the examiner has
conceded to be adequately supported by the specification. See the Examiner’s Answer, page 3
(“Examples show support for 25 mmol/l calcium ions.“) and page 4 (“[T]he specification . . . shows
1-20, preferably 5[ ]mmol/l” of EDTA.”). Claim 22 therefore should not have been included in this
rejection.
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