Appeal No. 2002-2063
Application No. 09/635,093
11-12) and that the point of the invention is reduction in the
high boiling aromatic solvent (Id., lines 13-15). Again, the
appellants’ arguments are misplaced. While proportions may not be
necessary to define the invention, they are necessary to define
over the cited prior art Furness, which suggests the instantly
claimed composition. The reduction in the high boiling aromatic
solvent is not directly claimed, as noted above. If a low-boiling
hydrocarbon is selected in Furness to begin with, no such
reduction is necessary.
Appellants further argue that the dependent claims further
define over the independent claim as follows:
Claims 12, 20, 25, 26, and 28 - solvent (b)(ii) contains more
FAME than high-boiling aromatic hydrocarbons. (Appeal Brief, page
17, lines 9-11). This argument is not persuasive as Furness’s
suggested solvents include a low-boiling aromatic solvent. When
that solvent is selected, along with the suggested FAME for mold
release, the claimed subject matter is suggested.
Claims 14 and 21 - solvents (a)(ii) and (b)(ii) consist
essentially of FAME. (Id., lines 12-13). As noted above, no
showing has been made that the phenolic component of Furness is
excluded by the language consisting essentially of. Consequently,
this argument is unpersuasive as well.
Claims 15-16, 18, and 21 - solvent (b)(ii) consists
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