Appeal No. 2005-0930 Page 7
Application No. 09/965,792
Second, the examiner’s reliance upon the language in claim 18 as suggesting
that the invention of Mondet includes the use of two plasticizers is misplaced. As set
forth in In re Benno, 768 F.2d 1340, 1346, 226 USPQ 683, 686 (Fed. Cir. 1985), “[t]he
scope of a patent’s claims determines what infringes the patent; it is no measure of
what it discloses.” Here, claim 18 of Mondet states that the claimed composition of that
patent may comprise at least one plasticizer. That language is indicative of the scope of
the claim in that compositions that meet the other requirements of that claim would
infringe if they contained more than one plasticizer. However, the language of claim 18
relied upon by the examiner is not seen to be a statement that the invention of Mondet
comprises at least two plasticizers. Reading Mondet as a whole as we must, we find no
clear suggestion that the Mondet composition should comprise two or more of the
stated plasticizers, let alone two or more of the stated plasticizers that meet the
requirements set forth in claims 1 and 9 of this application in regard to the first and
second organic solvents.
Third, we do not find the legal principle set forth in In re Kerkhoven to be
applicable to the present facts. In Kerkhoven, the question was would it have been
obvious to combine two different compositions in order to form a third composition that
would be used for the very same purpose. Here, the examiner does not propose to
combine two compositions in order to form a third composition. Rather, the examiner
must pick and choose among a component of the composition of Mondet in order to
arrive at a composition which would be within the scope of the composition set forth in
claims 1 and 9 on appeal.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007