Appeal No. 2005-1827
Application No. 10/227,761
Appellants are free to recite features of a composition either structurally or
functionally. See In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed.
Cir. 1997). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971).
However, when describing the invention, the inventor must describe the
invention adequately and specifically to avoid the prior art. In the present case,
Angell discloses detergent compositions that comprise disinfecting agents which
are included in the stated Markush Group of disinfecting agents in the claimed
invention. The specification discloses that the benefit agent of the present
invention can be present in the treating compositions in amounts ranging from
about 0.01% to about 90% by weight of the treating composition. Appellants
have not argued that the reference does not comprise the benefit agent in
amounts which are disclosed by the specification to be suitable for providing
the desired effect.
Appellants argue that the phrase “‘decrease in wash related damage’”
acts to limit and distinguish the claimed invention. (Brief, p. 9). Appellants also
argue that Angell’s formulation comprises ingredients which act to inherently
increase wash related damage to shoes (Brief, p. 9). We are not persuaded by
Appellants’ arguments. As stated above the treating agent disclosed by Angell
is present in an amount which has been described by the specification as being
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