Appeal No. 2003-175 Page 3
Application No. 09/838,950
added). The specification, like the initial claims, uses only the initial “about” when discussing
concentration ranges for the composition components. The Examiner’s rejection is on the basis
that insertion of “about” broadened the ranges in a manner such that one of ordinary skill in the
art would not be enabled to make and use the full scope of the dental composition of the claims.
The entirety of the Examiner’s rejection is as follows:
Claims 7, 8, 10, 12 and 13 are rejected under 35 U.S.C. 112, first
paragraph, because the specification, while being enabling for “about” the lower
limit of the claims, does not reasonably provide enablement for “about” the upper
limit of the claims. The specification does not enable any person skilled in the art
to which it pertains, or with which it is most nearly connected, to make and use
the invention commensurate in scope with these claims. Extending the claimed
range beyond the range described in the specification is not enabling and is new
matter.
(Answer, pp. 3-4).
We cannot say that the Examiner has met the required burden of proof for a rejection
based on lack of enablement. To meet the burden of proof, the Examiner must advance
acceptable reasoning inconsistent with enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982). The Examiner has not met that burden.
First, the addition of “about” in claims 8, 12, and 13 does not extend the claimed range
beyond what is described in the specification, the claimed ranges are entirely within a broader
disclosure of concentrations set forth in the specification. For instance, the range of claim 12,
i.e., “about 25 to about 65 parts reactive filler,” is completely within the broader range of “less
than about 90%” set forth in the specification (p. 7, l. 11). Moreover, the range of claim 13, i.e.,
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007