Appeal No. 2002-0444 Page 4
Application No. 09/086,138
and . . . interpreting what is meant by a word in a claim ‘is not to be confused with
adding an extraneous limitation appearing in the specification, which is improper.’”
Thus, if appellant amends the claims in response to the new ground of rejection, he
should take the opportunity to make sure the claim language defines the samples in the
manner intended by appellant.
On the other hand, it is unclear how the examiner interprets this phrase. In
stating the rejection on pages 5-6 of the Examiner’s Answer (Paper No. 22)1, the
examiner did not recognize the inherent ambiguity in claim 1 or favor the record with a
statement as to how the phrase “whole effluent sample” is construed. While the
examiner points to various disclosures in the Jaffe reference, including Example 6, as
apparently describing samples which purportedly meet this claim requirement, until the
examiner sets forth how broad or how narrow the claim is being interpreted in this
respect, it is not apparent on what basis he believes the various samples described in
the reference are encompassed by the claims on appeal.
If prosecution is continued on this subject matter, any further rejection from the
examiner should clearly state how the claims are being construed.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
1 We note that for reasons unclear from the record, the examiner issued a supplemental examiner’s
answer on August 21, 2001 (Paper No. 24). The supplemental answer appears to be a duplicate of the
original answer. In any event, it was not authorized by the rules. See 37 CFR § 1.193(b)(1).
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