Appeal No. 2007-0188 Page 5
Application No. 10/683,789
Appellants’ specification defines “mammalian substance” as including “any
mammalian substance not normally found in the mammalian extract, and any
substance normally found which may be detected at higher or lower than normal
levels (i.e., abnormal levels).” Specification, page 3. In addition, Appellants’
specification discloses that “[e]xemplary mammalian substances included
hydrogen ion, ion aggregate (i.e., total ion concentration), nitrite, leucocytes,
glucose, ketones, blood, phenylanaline, bilirubin, urobilinogen, protein, albumin,
specific enzymes, and drugs.” Specification, page 2.
It is well established that alternative elements positively recited in a
specification may be explicitly excluded in the claims. As set forth in In re
Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977), “[t]he
specification, having described the whole, necessarily described the part
remaining.” In this case, as in Johnson, Appellants have “merely excis[ed] the
invention of another[ ]6, to which they are not entitled. . . .” Id.
Accordingly, we reverse the rejection of claims 1, 3-26 and 28 under the
written description provision of 35 U.S.C. § 112, first paragraph.
Obviousness:
The combination of Diehl or Springer with Ponce and Rittersdorf:
The Examiner finds Diehl and Springer teach a wearable article
comprising a substrate, target area and chemical detection area as set forth in
Appellants’ claimed invention. Answer, bridging paragraph, pages 4-5 and page
6 See, e.g., Diehl and Springer as discussed by the Examiner (Answer, pages 4-5 and 6) and
Appellants (Brief, pages 9-10 and 12-13).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013