Appeal No. 2005-1402 3
Application No. 10/403,021
Claims 3 and 4 identify the substance of claim 1 as a substance having "a solubility
in water of 10 g or more." The examiner argues that claims 3 and 4 are indefinite because
the amount of water that the substance is soluble in is not specified, and appellants’
specification fails to clarify the matter. See Answer, p. 2; Specification, p. 7, lines 12-14
and p. 12, lines 16-18.
Appellants maintain that the term “solubility,” as claimed, refers to a solubility test
commonly used in the art, i.e., a test based on 100 g of solution. See Brief, p. 11. For
support, appellants rely on a definition of "solubility test" in Encyclopaedia Chimica1 and
definitions of "solubility" and "solute" in Fundamental Dictionary of Chemical Term.2,3 See
Brief, pp. 11 and 12; Appendix to Brief. Appellants conclude that (Brief, pp. 11-12):
[O]ne of ordinary skill in the art reading the claims in view of the specification
and the knowledge in t[h]e art would understand that the solubility of
1An English translation of a portion of a page from Encyclopaedia Chimica submitted by appellants
and of record in the application provides the following definition of “solubility test”:
Test to measure the solubility. Generally, an excessive solute (which is sufficiently
reduced to powder) is dissolved into a solvent at the prescribed temperature and is made
it saturated completely. Then, a certain quantity of this solution is measured accurately,
and, after the solvent is evaporated completely, the remain is weighed. And, the number
of grams of the solute in 100g of solution is found. . . .
2An excerpt from Fundamental Dictionary of Chemical Term submitted by appellants and of record
in the application provides the following definition of “solubility”:
The limit up to which a material (solute) dissolves in another material (solvent such as
water). The solubility of a solid is often expressed in terms of the quantity (g) of a solute
dissolvable in 100 g of a solvent. . . .
3An excerpt from Fundamental Dictionary of Chemical Term submitted by appellants and of record
in the application provides the following definition of “solute”:
A material dissolved in a solution[.] In the case where a fluid dissolves in another fluid,
the one smaller in quantity is designated.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007