Appeal No. 2002-1622 Page 9
Application No. 08/735,836
Appellants cite In re Werthiem, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), in support of
their position that the absence of a range disclosure provides support, but that case involved
different facts. As acknowledged by Appellants (Brief at 6), in Werthiem, the application
disclosed a range of 25% to 60% which encompassed the claimed range of 35% to 60% and
recited specific examples at 36% and 50%. Werthiem, 541 F.2d at 264, 191 USPQ at 98. In the
present case, Appellants acknowledge that the original disclosure is entirely silent as to any
range and Appellants do not rely on any amounts specified in the Examples. A total lack of
description does not give Appellants free rein to claim everything encompassed by silence.
Here, Appellants do not even describe a forest, much less provide any blaze marks marking the
path through the forest to a grove of trees representing the ranges of the claims. See Ruschig,
379 F.2d at 994-995, 154 USPQ at 122; see also Purdue Pharma, 230 F.3d at 1326, 56 USPQ2d
at 1486. We agree with the Examiner that the written descriptive support relied upon by
Appellants is insufficient to meet the requirements of 35 U.S.C. § 112, ¶ 1.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1, 3, 6, 21, 24-26, and 38-42
under 35 U.S.C. § 103(a) and claims 50-57 under 35 U.S.C. § 112, ¶ 1 is affirmed.
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