Appeal No. 2003-1162 Page 23
Application No. 09/468,292
Claim 59 requires a step of substantially dissolving at least one precursor in the ionic
liquid. Appellant seeks to distinguish the claims from the process of Frigo in view of Freemantle
on the basis that Frigo requires only a portion of the precursor dissolve, the rest remaining as a
solid phase (Amended Brief, pp. 8-9; see also Frigo, col. 4, ll. 2-4). In Appellant’s view,
“substantially dissolving” means “dissolving” more than 50% by weight of the precursor
(Amended Brief, pp. 15-16) and Frigo teaches away from such levels because Frigo states that
“[g]ood results are obtained if no more than 50% by weight of the metal precursor initially
dissolves in the liquid present.” (Amended Brief, pp. 8-9; see also Frigo, col. 4, ll. 5-7).
In response, the Examiner maintains the rejection of claims 59 and 60 under 35 U.S.C.
103(a) on the basis that “substantially dissolved” means “dissolved to a considerable extent” and
that Frigo dissolves to such an extent (Answer, pp. 11-12 and 25).
In order to properly consider the rejection for obviousness, we must first interpret the
claims. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir.), cert.
denied, 481 U.S. 1052 (1987). “When examining claims for patentability, claims are interpreted
as broadly as is reasonable and consistent with the specification.” In re Thrift, 298 F.3d 1357,
1364, 63 USPQ2d 2002, 2006 (Fed. Cir. 2002). Claim 59 merely uses the phrase “substantially
dissolving” and nothing in the specification indicates that a “substantial” level is any particular
percentage. It is therefore, inappropriate to limit the claims to Appellant’s desired definition, i.e.,
more than 50% by weight. Instead, we adopt, as did the Examiner, the ordinary and accustomed
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