Appeal No. 2001-0983 Page 3
Application No. 08/954,946
composition is phenoxyacetic acid, the claim would appear to read on purified
phenoxyacetic acid itself, since a pure sample of the compound would “comprise”
whatever amount of the compound is considered to be an effective amount.
On the other hand, the specification suggests that the claimed
compositions comprise phenoxyacetic acid in a particular range of
concentrations. See page 21, lines 3-12 (“[T]he amount of the present agents
delivered from a gel formulation . . . is from 0.1 to 10% by weight, and preferably
from 0.25% to 2.0% by weight. . . . For example for topical application, the
amount of phenoxyacetic acid and lower alkyl esters thereof is from about 0.1 to
2.0 percent by weight, preferably from about 0.25 to 1.0 percent by weight based
on the total weight of the composition.”). Since the recited concentration range
has an upper boundary, the specification suggests that the claimed composition
is intended to comprise components other than phenoxyacetic acid.
Thus, we find that the scope of the claims is unclear. Specifically, it is
unclear whether or not it would be reasonable to construe claim 18 to read on
phenoxyacetic acid itself. If the claim does not read on phenoxyacetic acid itself,
it is unclear what else is required by the claim language.
Keeping in mind the above discussion, the examiner should provide on the
record a proper interpretation of the claim language. The examiner should also
keep in mind that “in proceedings before the PTO, claims in an application are to
be given their broadest reasonable interpretation consistent with the
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