Appeal No. 2003-175 Page 5
Application No. 09/838,950
apply to both the lower and upper ends of the ranges even though it is only present at the end of
the phrase: That is basic grammar. Likewise, “about” reasonably applies to both endpoints. In
such an interpretation, there is no difference in scope between “about X to Y parts” and “about X
to about Y parts.” The Examiner provides no evidence that one of ordinary skill in the art would
not read the specification in accordance with commonly understood English grammar. Note that
claims as well must be so read. See In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed.
Cir.1983) ("A claim must be read in accordance with the precepts of English grammar.").
We also find the reference to “new matter” in the context of the rejection for lack of
enablement confusing. The Examiner fails to explain how this discussion of “new matter”
applies to the rejection for lack of enablement. Nor, since the reference to “new matter” is
contained in the enablement rejection, has the Examiner provided the Appellants with proper
notice that a rejection on the basis of new matter is being maintained. We, therefore, will not
address this issue.
We conclude that the Examiner has failed to establish a prima facie case of lack of
enablement with respect to the subject matter of claims.
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