Appeal No. 2003-1092
Application No. 09/692,730
overlaps the lysine concentration taught and claimed by the
Appellants. Stated otherwise, as it presently exists, the
application file record reflects that the Examiner believes
at least some of the appealed claims are unpatentable over the
disclosure of Grumbine. We will not here comment upon whether or
not such a belief is well founded since the appeal before us does
not present such an issue.
Nevertheless, the file record must be clarified in terms of
claim patentability versus unpatentability in relation to the
Examiner’s aforequoted statement. This is because, in the absence
of clarification, the Examiner’s statement could be interpreted as
militating against the validity of any patent claims which might
issue from this application. As a consequence, upon return of the
subject application to the jurisdiction of the Examining Corps, the
Examiner must address and resolve on the written record whether and
why he believes the slurry defined by some or all of the appealed
claims to be patentably distinguishable or indistinguishable from
the slurry disclosed by Grumbine.
For example, the Examiner may believe that an artisan in
formulating a slurry in accordance with Grumbine’s disclosure would
have found it obvious to select lysine specifically as a tungsten
etch/corrosion inhibiting agent and would have found it obvious to
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