Appeal No. 1997-2947
Application No. 08/352,079
added wholly apart from any need to interpret what the patentee meant by particular words or
phrases in the claim. Renishaw PLC v. Marposs Societ a per Azioni, 158 F.3d 1243, 1249, 48
USPQ2d 1117, 1121 (Fed. Cir. 1998).
Additionally, we note that appellants’ use of the term “adsorption catalyst” is consistent
with that of the prior art. Specifically, Abe uses the term “adsorbent-catalyst” to mean a material
having both an adsorbent material, zeolite, and a catalytic material, such as a noble metal.
Indeed, when Abe describes an adsorbent having a catalyst Abe employs the term “adsorbent
catalyst” whereas when the adsorbent does not have a catalyst, Abe uses only the term
“adsorbent.” (Abe, Example 3).
Moreover, the examiner’s construction of the term “adsorption catalyst B” as not
requiring the presence of a catalyst would contravene public policy regarding the notice function
of claim language. A claim demarcates the boundaries of the purported invention in order to
provide notice to the examiners of what is to be examined during ex parte prosecution and to
provide notice, once issued, to the public of the limits beyond which experimentation and
invention are undertaken at the risk of infringement. See Athletic Alternatives, Inc. v. Prince
Manufacturing, Inc., 73 F.3d 1573, 1581, 37 USPQ2d 1365, 1372 (Fed. Cir. 1996). Thus to
construe appellants’ “adsorption catalyst” as not requiring a catalyst would undermine the fair
notice function and grant unreasonable advantage to the appellants and disadvantages to others.
Further, not only would such a claim construction eviscerate a clear and unambiguous claim term
but it would encourage practitioners to draft applications that on their face claim an invention
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