Appeal No. 2001-0982 Page 3
Application No. 08/310,950
GROUNDS OF REJECTION
Claims 1-23 stand rejected under 35 U.S.C. § 112, first paragraph, as
being based on an insufficient disclosure to support or enable the scope of the
claimed invention.
Claims 1-23 stand rejected under 35 U.S.C. § 112, second paragraph as
indefinite since they are not limited to the elected species.1
Claims 1-23 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Adams in view of Braun.
We reverse.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, bridging sentence, pages 3-4),
appellants’ “claims are beyond the limited specification since they do not claim
the amounts of active agents which will yield the synergistic effect.”
However, as appellants’ explain (Reply Brief, page 1), the claims are
limited to “synergistically effective amounts”. In addition, appellants emphasize
(Reply Brief, page 4), “[t]he specification clearly indicates that the invention can
provide a synergistic effect; see page 10, lines 25-30.” Furthermore, appellants
argue (Reply Brief, page 1), “[d]etermining synergistically effective amounts of
the individual components of the composition other than those explicitly
1 It appears through an inadvertent error the examiner did not restate this ground of rejection
under § 10 of the Answer. Nevertheless, the examiner clearly maintained this ground of rejection
at page 5 of the Answer (“Therefore the rejection is proper under 35 USC 112 [sic], second
paragraph since the claims are indefinite.”).
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