Appeal No. 2006-2023 Page 9
Application No. 10/650,785
The appellant has directed us to page 12, line 30 through page 13, line 13
of the specification where the ‘044 specification states (bracketed text added)
(emphasis added):
an alternative process, [wherein] steps c. [(separating the ion-exchange
resins loaded with the dissolved organic carbon from the water)] and d.
[(subjecting the water to membrane filtration)] may be combined so that
the membrane effects separation of the resin while simultaneously
filtering the water.
In other words, the ‘044 specification describes the same membrane as
simultaneously both separating the resin and filtering the treated water. The examiner
has not explained why this description would not have reasonably conveyed to one of
ordinary skill a method step of “removing treated water through the membrane filter.” In
re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996) (“If… the
specification contains a description of the claimed invention… then the examiner… in
order to meet the burden of proof, must provide reasons why one of ordinary skill in the
art would not consider the description sufficient”).
Nonetheless, we concur with the examiner that the subject matter of appealed
claim 1 is not entitled to the filing date of the earlier ‘044 application because the ‘044
disclosure does not reasonably convey to one skilled in the relevant art that the
appellants had possession of the full scope of the now claimed subject matter, which
was added after the filing of the application during prosecution. It is well settled that the
United States Patent and Trademark Office (PTO) is obligated to give disputed claim
terms their broadest reasonable interpretation, taking into account any enlightenment by
way of definitions or otherwise found in the specification. In re Bigio, 381 F.3d 1320,
1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)(“[T]he PTO gives a disputed claim term
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