Appeal No. 2003-175 Page 4
Application No. 09/838,950
“about 0.05 about 3.0 parts” is completely within the broad range of about 0.05 to 5 parts recited
in the specification (specification, p. 9, ll. 1-2). With respect to claim 8 and, additionally, claim
13, the useful concentrations of oxidizing and reducing agents are discussed in the specification
in a broad manner (specification, p. 8, ll. 30-32) and the ranges are only example ranges
(specification, p. 8, l. 32 to p. 9, l. 3). The first paragraph of § 112 requires nothing more than
objective enablement. In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993). The general discussions and wider ranges provide objective enablement for the claimed
ranges. Therefore, the burden is on the examiner to provide sufficient reasons for doubting any
assertions in the specification as to the scope of enablement. No such convincing reasons are
advanced on this record.
With respect to those claims with no corresponding broader disclosure in the
specification, there may be times when a slight difference in scope will support a rejection for
lack of enablement, but this is not such a case. The claims are directed to a dental composition
and nothing in the specification indicates that minor differences in concentration render the
composition unsuitable. The Examiner simply has provided no basis for the conclusion that one
of ordinary skill in the art would not have been able to make the dental compositions at the
slightly higher levels of the claims, if, indeed, the upper levels are outside the ranges discussed in
the specification.
It is also reasonable to read the specification as using “about” to modify both the lower
and upper ends of the ranges in recitations such as “about 5 to 75 parts.” After all, “parts” would
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