Appeal No. 2003-1774
Application No. 09/797,038
We consider first the examiner’s rejection under § 112,
second paragraph, for the reason that the claim term “acetosol
yellow 5GLS” is an improper trade name or trademark. Although
the Board reversed the examiner’s § 112, second paragraph,
rejection of the claim term “CI Solvent Yellow 138" in the
related application, we agree with the examiner that the issue
presented in the instant appeal is based on different facts than
those in the related appeal. As explained by the examiner,
appellants utilize the dye in the present invention not for its
color but as an agent to reduce room light fatigue. Hence, while
it may be reasonable to conclude that all materials/compositions
having the designation C.I. Solvent Yellow 138 share the
properties listed in the Colour Index, “[a]ppellants have not
explained why all such materials would necessarily be useful for
the function required by their claimed invention” (page 23 of
answer, last paragraph). The examiner properly states that
“[t]he Colour Index definition of C.I. Solvent Yellow 138 does
not include its use as an agent to ‘reduce room light fatigue’ as
used in the instant invention” (Id.). Based on appellants’
specification, the examiner is on sound footing in reasoning that
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