Appeal No. 2003-1162 Page 17
Application No. 09/468,292
opens a method claim to the inclusion of additional steps, but does not affect the scope of the
structure recited within the steps).
It is true that the claims might allow for the addition of ionic liquids with substituents not
covered by the “consisting essentially of” language of the specification. But the fact that the
claims are “open” to the inclusion of additional ionic liquids is a concept within the scope of the
written description and that is sufficient for written descriptive support. See In re Anderson, 471
F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA 1973). The ionic liquids of the claims are recited
in the specification as examples of useful ionic liquids. The specification does not particularly
limit the ionic liquids to those within the exemplified generic formulas: The specification is
directed to the use of ionic liquids in general and then states that “for example” the ionic liquid
may be one from the generic formulas set forth. We agree with Appellant that the specification
sufficiently indicates that the inventor contemplated the use of ionic liquids in addition to those
exemplified (Reply Brief, p. 3).
We conclude that the Examiner has failed to establish a lack of written description under
35 U.S.C. § 112, ¶ 1 with regard to the subject matter of claims 46-57.
Issue (1a)
We next consider Issue (1a), i.e., the rejection of claims 1, 3-9, 23, 24, 46-49, 57, 59-64
and 72 under 35 U.S.C. § 103(a) as being unpatentable over Frigo in view of Freemantle. We
select claim 1 to represent the issues on appeal with respect to this rejection.
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