Ex parte NAGAI et al. - Page 9




                Appeal No. 1996-2211                                                                                                       
                Application No. 08/018,546                                                                                                 


                        Given the ambiguity of the terms “transporting” or “transportation medium” it is difficult to                      

                distinguish between a “transportation medium” and a culture medium.  Webster’s Seventh Collegiate                          
                Dictionary 941 (7th ed. 1963)  defines “transport” and “transportation” as:5                                                                                          

                        Transport:  1: to convey from one place to another: CARRY.                                                         

                        Transportation:  1: an act, process, or instance of transporting or being transported.  3a:                        

                        means of conveyance or travel from one place to another.                                                           

                Therefore, the claims are open to two possible interpretations:  (1) transportation over a nominal                         

                distance, e.g. from a laboratory bench to a “warm box”; or (2) transportation over long distance, e.g.                     

                from the laboratory to a farm for implantation of the embryos.  As set forth in In re Morris, 127 F.3d                     

                1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997):                                                                         

                                It is the applicants’ burden to precisely define the invention, not the                                    
                                PTO's.  See, 35 U.S.C. § 112, second paragraph ("The specification                                         
                                shall conclude with one or more claims particularly pointing out and                                       
                                distinctly claiming the subject matter which the applicant regards as his                                  
                                invention."). While it is true that the claims were not rejected on the                                    
                                ground of indefiniteness, this section puts the burden of precise claim                                    
                                drafting squarely on the applicant. The problem in this case is that the                                   
                                appellants failed to make their intended meaning explicitly clear.                                         




                        5A copy of page 941 from Webster’s Seventh Collegiate Dictionary (7th ed. 1963) is attached to this                
                decision.                                                                                                                  

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