Appeal 2007-2364
Application 09/879,613
original Specification for the recitation of "0.5%" (claim 9) and "around
0.5%" (claims 1 and 5) hydrogen peroxide. The cases of Lockwood v.
American Airlines, 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966 (Fed.
Cir. 1997) (“Entitlement to a filing date does not extend to subject matter
which is not disclosed but would be obvious over what is expressly
disclosed. It extends only to that which is disclosed . . . The question is not
whether a claimed invention is an obvious variant of that which is disclosed
in the specification. Rather, a prior application itself must describe an
invention, and do so in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought.”) and In re Wertheim, 541 F.2d 257, 261–67, 191 USPQ 90,
95 -100 (CCPA 1976) (discussing the written description requirement)
provide appropriate guidance for evaluating the facts of this case. We
express no opinion on the resolution of these questions, but note that the
outcome may affect the analysis of whether "about 0.5%" hydrogen peroxide
reads on the 1% hydrogen peroxide disclosed Onodera, or whether it
remains the result of mere optimization of a result effective variable.
D. Conclusion
In view of the record and the foregoing considerations, it is:
ORDERED that the Examiner's rejection of claims 1, 3–5, 9,
and 12 as unpatentable under 35 U.S.C. § 103 over the combined teachings
of Onodera and Paley is REVERSED;
FURTHER ORDERED that a new ground of rejection is
entered pursuant to 37 C.F.R. § 41.50(b).
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