Appeal No. 2003-1162 Page 15
Application No. 09/468,292
Issue (11)
We next consider issue (11), the rejection of claims 46-57 under the written description
requirement of 35 U.S.C. § 112, ¶ 1. The rejection is on the basis that these claims use
“comprises” while the specification uses the more restrictive language “consists essentially of”
when introducing a group of alternative substituents of a generic chemical formula (Answer, p.
17). The Examiner states that there is no indication that Appellant had possession of the groups
encompassed by “comprises” but not encompassed by “consisting essentially of” (Id.). This
reasoning seems to be grounded in the broad proposition that “consisting essentially of” occupies
a middle ground between “comprises” and “consisting of” in terms of openness. PPG Industries,
156 F.3d at 1354, 48 USPQ2d at 1353.
The Examiner’s reasoning does not apply to claim 53. Claim 53 does not use the word
“comprises” in a way that “opens” the recited group to other substituents as argued by the
Examiner. Claim 53 is dependent on claim 13 which limits R1, R2, and R3 to alkyls. Claim 53
further limits the alkyls to those of a particular range of carbon chain length. The Examiner has
not established a lack of written description with respect to claim 53.
Claims 46-52 and 54-57 stand on a different footing. These claims introduce a list of
substituents with the word “comprises.” For instance, claim 46 limits the ionic liquid to one of a
generic formula in which “Y- comprises halides, sulfates, .... or mixtures thereof.” The
specification, as pointed out by the Examiner introduces those same groups using the transitional
phrase “consisting essentially of.” It is to these claims that the Examiner’s reasoning applies.
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