Appeal 2006-3208
Application 10/097,232
Patentability of the Dependent Claims
Appellants separately argue certain claims or groups of claims. We
address these arguments below:
1. CLAIMS 2-5: THE FORM OF THE COMPOSITION
Each of these claims specifies the form of the composition of claim 1:
Claim 2 requires an “aqueous liquid;” claim 3 requires a “non-aqueous
liquid;” claim 4 requires a “powder;” and claim 5, a “shaped or molded
solid.”
Li discloses aqueous and nonaqueous liquids (FF 3). Commercial
lubricants in the form of powders were also available at the time the
invention was made (FF 4). Additionally, Li discloses their conveyor
lubricant composition in the form of a solid in the shape of a portion of the
bottle of Fig. 1 (FF 8).
2. CLAIMS 6-12: SINGLET GENERATING AGENTS
Claim 6 requires a “photochemical singlet oxygen-generating agent,
clearly taught by Goodrich (FFs 13 & 14). Claims 7, 10, and 11 each
require the agent be limited to one of a list of specific dyes, including one or
more taught by Goodrich (FF 15).
Claim 12 limits the amount of the dye. Without evidence of
unexpected results due to the numerical limitations in claim 12, it would
have been within the level of skill in the art to optimize the amount of dye
used. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“Only
if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent
be obtained for the claimed critical range.” (quoting In re Antonie, 559 F.2d
618, 620, 195 USPQ 6, 8 (CCPA 1977)), quoted with approval in In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013