Appeal 2007-2916
Application 10/225,502
somewhat narrower claimed range. The Examiner does not contend that a
molding composition having boron nitride and alumina in the broader
described ranges pertains to a different invention than the claimed molding
composition having boron nitride and alumina in the narrower recited
ranges.
Therefore, in the context of this invention, in light of the description
of the composition of the invention as having boron nitride and alumina
components in the range of "25% to 60% by volume," we are of the opinion
that, as a factual matter, persons of skill in the art would consider
compositions comprising boron nitride and alumina each in the range of
"25% to 35% by volume" to part of Appellants' originally described
invention. If lack of literal support alone were enough to support a lack of
original descriptive support rejection under § 112, first paragraph, then the
statement in In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA
1971) that "the invention claimed does not have to be described in ipsis
verbis in order to satisfy the description requirement of § 112" is
meaningless. In short, the Examiner has not explained why a description of
the invention not in ipsis verbis is insufficient in this case.
Based on the foregoing, we will reverse the decision of the Examiner
to reject claims 1-3, 7 and 10 as unpatentable for lack of original descriptive
support.
IV. Obviousness
A claimed invention is not patentable if its subject matter would have
been obvious to a person of ordinary skill in the art. 35 U.S.C. § 103(a);
KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007);
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Facts
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