Appeal No. 2003-1280 11
Application No. 09/476,633
Here, the examiner (answer, page 4) urges that :
[t]here is no description in the specification as
originally filed of the use of hydrogen peroxide
only. There is only seen support for hydrogen
peroxide and nitric acid (Page 8, lines 1-2) and
hydrogen peroxide and deionized water (Page 8,
lines 15-19).
However, a review of claim 23 reveals that appealed method claim does not require
the use of hydrogen peroxide only but rather requires that a second agent consisting of
hydrogen peroxide is introduced. The last sentence of the first paragrapgh of page 9 of
appellants’ specification taken together with the second paragrapgh of page 7 of the
specification reasonably describes such a step. Also, see, e.g., original claims 18 and 19.
Moreover, with respect to claims 24 and 25, as urged by appellants (reply brief, page 3),
one of ordinary skill in the art would understand that the claim language “solution” implies a
solvent in addition to the specified solute. Furthermore, to the extent that the recited
“consisting of” language may have been considered inconsistent with such a claim
construction as urged by appellants that concern would raise an issue under the second
paragrapgh of 35 U.S.C. § 112, not the first paragraph.
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