Appeal No. 94-3182
Application 07/899,707
in the old composition.
The problem with this appeal is that the examiner appears
to have held that terms such as “adapted to contain” and
“whereby” in patent claims per se do not further limit the
subject matter claimed and so disregards them. However, claim
interpretation independent of the teaching of the supporting
specification is improper. Claims are to be given their
broadest reasonable interpretation, but the interpretation
must be consistent with the description of the invention in
the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). The purpose of broad claim
interpretation during examination is to completely explore the
invention applicant claims and its relation to the prior art,
to bring ambiguities to light, and to induce and allow
applicant to clarify and delineate the claimed invention by
amendment. Id. Prosecution which starts with the Examiner’s
Answer defeats the primary purpose of examination.
In this case, the rejection under 35 U.S.C. § 102(b) was
entered for the first time in the Examiner’s Answer. As a
result, the exploration of the invention applicant claims and
its relation to the prior art was incomplete, claim
ambiguities were inadequately considered, and appellant’s
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