Appeal No. 2004-0384 Page 5
Application No. 09/979,424
Water
The compositions of the present invention may also comprise water. If
present, the water will preferably comprise from about 0.1% to about 40%,
more preferably from about 1% to about 30%, even more preferably about
5% to about 20%, by weight, of total composition. [Emphasis added].
Giving claim 1 its broadest reasonable interpretation consistent with the
specification, and reading applicants’ claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art, we conclude that “a volatile
solvent” does not “read on” water. On the contrary, “a volatile solvent” recited in claim 1
excludes water. This follows from a review of the specification in its entirety where (1)
applicants describe the volatile solvent at page 9, line 18, through page 10, line 8; and
(2) applicants state, in the ensuing passage at page 11, line 10, that “the compositions
of the present invention may also comprise water” (emphasis added).
Where, as here, the examiner’s argument is based on an incorrect claim
interpretation, i.e., that “a volatile solvent” in claim 1 “reads on” water, the argument is
not persuasive. On these facts, we agree with applicants that the Trinh ‘940 disclosure
of cosmetic compositions comprising greater than 20% of water, by weight of total
composition, does not suggest the cosmetic composition recited in claim 1 requiring
“about 20% or greater of a volatile solvent.” We disagree that Trinh ‘940 discloses or
suggests the cosmetic composition of claim 1, considered as a whole, including the
limitation “about 20% or greater of a volatile solvent.” Nor has the examiner established
that Trinh ‘937, Lucas ‘341, or Lucas ‘342 cures the above-noted deficiency of Trinh
‘940.
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