Appeal No. 3-1969
Application 09/690,731
We find that when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Thrift, 298 F.3d 1357, 1364,
63 USPQ2d 2002, 2006 (Fed. Cir. 2002); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), the plain language of appealed independent claim 4 specifies that the claimed dental
glass ionomer cement composition comprises, inter alia, a coloring matter whose color is
specified as having an “L* value . . . in a standard illuminant D65” of “60 or less” and is selected
from the stated Markush group of “coloring matter.”
The examiner correctly recognizes that Kondo does not disclose a coloring agent that falls
within the Markush group of “coloring matter” in appealed claim 4, for use in the disclosed
dental glass ionomer cement composition taught in the reference. In this respect, the examiner
takes the position that one of ordinary skill in the art would have recognized that other coloring
agents, such as the coloring agents in the secondary references characterized by the examiner as
“pH sensitive,” can be used in the dental glass ionomer composition of Kondo because Kondo
teaches “employing coloring agents which are pH sensitive.” Thus, the examiner alleges that one
of ordinary skill in the art would have combined the specified coloring agents of the secondary
references, which fall within the Markush group of “coloring matter” in claim 4, with the
teachings of Kondo in order to obtain a glass ionomer cement within the teachings of the
reference, and accordingly, arrive at the claimed invention (answer, pages 4-5).
Appellants point out that the coloring agent used in the composition of Kondo must
change “its color tone with the change in pH so that the color tone of the cement composition can
change upon initial setting of the cement composition” such that the “color change is relied upon
for visual observation of the degree of setting of the cement composition,” and submit that the
“coloring matter” specified in appealed claim 4 “is not a pH indicator” as required by Kondo
(brief, page 4; see also reply brief, page 2). Appellants further point out that while the coloring
agent alizarin is disclosed in their specification and in Kondo, it is not encompassed by appealed
claim 4, and submit that “[t]he fact that the disclosure is broader than the claims now present in
the case manifestly cannot be relied upon by the Examiner for a holding of obviousness of the
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