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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