Appeal No. 2001-1581 Page 4
Application No. 08/833,172
for the term, and the others fail to define the term cycloheteroalkyl as broadly as
appellant asserts. See Id.
We appreciate that appellant is entitled, within reason, to be his own
lexicographer. However, in the instant case, appellant failed to provide a
definition of the term “cycloheteroalkyl” in his specification. Looking to the
evidence relied upon by appellant to support his position, we agree with the
examiner that the evidence fails to provide a consistent meaning of the term
“cycloheteroalkyl” or even one that is as broad as appellant appears to have
intended.
It may be that by reciting the term “cycloheteroalkyl” appellant intended to
mean saturated heterocyclic rings, however, be that as it may the term as used in
the claim is indefinite. Compare In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d
1023, 1029 (Fed. Cir. 1997):
The appellants urge us to consult the specification and some
of the cited prior art, including Brown, and interpret the disputed
language more narrowly in view thereof. When read in light of this
material, according to applicants, the “true” meaning of the phrase
emerges. We decline to attempt to harmonize the applicants’
interpretation with the application and prior art. Such an approach
puts the burden in the wrong place. It is the applicants’ burden to
precisely define the invention, not the PTO’s.
While the claims in Morris were not rejected on the ground of indefiniteness, the
court explained that 35 U.S.C. § 112, second paragraph puts the burden of
precise claim drafting squarely on the applicant. Id. The problem in this case, as
in Morris2, is that appellant failed to make the intended meaning explicitly clear.
Accordingly, we affirm the examiner’s rejection of claim 1 under 35 U.S.C. § 112,
2 In re Morris, 127 F.3d at 1056, 44 USPQ2d at 1029.
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007