Appeal No. 2000-2192
Application 08/943,123
unpatentable over Levy ‘389 and ‘251 in combination with Reick and Lewis et al. (Lewis).1,2,3
We refer to the examiner’s answer and to appellant’s brief and reply brief for a complete
exposition of the opposing views of the parties.
In the first ground of rejection, the examiner contends (answer, pages 4 and 6) that the
scope of the appealed claims exceeds the subject matter which appellant regards as his invention
as set forth in the amendment filed July 1, 1998 (Paper No. 27; pages 9-11; see reply brief, pages
2-5 and attachment; see also brief, pages 12-14). We must agree with appellant that the
statements in the amendment cannot reasonably be construed as a specific statement by appellant
that his invention is limited solely to the subject matter relied on in argument presented in the
amendment. Compare In re Cormany, 476 F.2d 998, 1001-02, 177 USPQ 450, 453 (CCPA
1973). Accordingly, we reverse this ground of rejection.
In the second ground of rejection, the examiner contends that there is no antecedent basis
in appealed claim 78 for the mixture of water and a lubricant as an additional ingredient as set
forth in each of appealed claims 79 and 80, because appealed claim 78 specifies that the “said
material for decreasing friction is water” (answer, pages 4-5 and 7). We have carefully
considered the respective positions of the examiner and appellant (brief, page 16-17; reply brief,
pages 5-6). We interpret the transitional phrase “consisting essentially of” to open appealed
claim 78 to include at least materials disclosed by the specification to be lubricating materials
useful with superabsorbent polymers. See generally, In re Herz, 537 F.2d 549, 551-52,
190 USPQ 461, 463 (CCPA 1976); Ex parte Boukidis, 154 USPQ 444 (Bd. App. 1966). Thus,
the compositions containing water and a lubricating material encompassed by appealed claims
79 and 80 find antecedent basis in appealed claim 78 on which they directly depend, and
accordingly, we reverse this ground of rejection.
In the third ground of rejection, the examiner contends that, prima facie, the combined
1 Appealed claims 72 through 86 are all of the claims in the application. See the appendix to the
brief.
2 Answer, pages 4-6.
3 The examiner withdrew grounds of rejection under 35 U.S.C. § 112, first paragraph, and
second paragraph, except for the grounds of rejection under 35 U.S.C. § 112, second paragraph,
set forth above.
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