Appeal No. 2004-0384 Page 4
Application No. 09/979,424
Independent claim 1, the broadest claim on appeal, includes the limitation “about
20% or greater of a volatile solvent.” The examiner’s position to the contrary,
notwithstanding, the combined disclosures of Trinh ‘940, Trinh ‘937, Lucas ‘341, and
Lucas ‘342 constitute insufficient evidence to support a conclusion of obviousness of
claims including that limitation.
First, the examiner argues that recitation of “a volatile solvent” in claim 1 “reads
on” water; that this constitutes the broadest reasonable interpretation of claim 1
consistent with the specification, page 9, line 18 through page 10, line 8; and that Trinh
‘940 discloses cosmetic compositions comprising greater than 20% of water, by weight
of total composition (Paper No. 15, page 6, second paragraph). Accordingly, the
examiner argues that “this limitation [about 20% or greater of a volatile solvent] is met
and clearly taught by Trinh [‘940].” The argument lacks merit.
As stated in In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983):
It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation
consistent with the specification, In re Prater, 415 F.2d 1393, 1404, 162
USPQ 541, 550 (CCPA 1969), and that claim language should be read in
light of the specification as it would be interpreted by one of ordinary skill
in the art. In re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194
(CCPA 1977).
We have carefully considered the passage in applicants’ specification running from
page 9, line 18, through page 10, line 8, describing a “volatile solvent.” Additionally, we
note the ensuing passage at page 11, lines 9 through 13, describing water:
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