Appeal No. 2002-1557 Page 3
Application No. 09/305,746
person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the invention commensurate in
scope with these claims.
Examiner’s Answer, page 4-5.
If, as the rejection states, the examiner is concerned with the scope of the
liquid composition, it is unclear why only claim 6 stands rejected. Moreover, the
statement of the rejection thus does not set forth any evidence or argument why
the specification does not provide enablement for liquid compositions in the
claims. Based on the response to argument, however, it is the panel’s
understanding that the examiner is concerned that Shimada discloses a liquid
composition that also results in the removal of makeup. In addition, the
examiner asserts that water is a liquid composition, and the specification at page
19, Table 2, indicates that when purified water is used alone, 50% of the sebum
remained, and there was also some makeup spreading and retention. The
examiner also notes that at page 18 of the specification, lines 2-6, “it is disclosed
that in the case where the amount of liquid composition applied per unit area of
skin less than 0.01 mg/cm2 tend to cause make-up fading.” Examiner’s Answer,
page 6.
Appellants argue in response that there is no basis for the examiner to
doubt the objective truth of the disclosure, and thus the rejection should be
reverse. Appeal Brief, page 11. We agree.
“[A] specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in scope to
those used in describing and defining the subject matter sought to be patented
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