Appeal No. 2002-0444 Page 3
Application No. 09/086,138
whole effluent sample. As presently drafted, it is unclear how many samples must be
obtained in claim 1 and how the samples are to be utilized.
Claim 1 is ambiguous to say the least. As set forth in In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), “[D]uring patent prosecution when
claims can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. … An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and unambiguous.
Only in this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” Appellant needs to review claim 1 and clarify how
many samples are involved in the method and how the samples are to be used.
OTHER ISSUES
If prosecution is resumed in this application and appellant presents claims which
obviate the problem set forth in the above rejection, the examiner will have to determine
whether the new claims are patentable over the Jaffe reference. In an attempt to move
this case forward in a positive manner, we make the following observations.
The key to deciding the patentability issues in this case in our view is the
interpretation or construction one places on the phrase “whole effluent sample.” From
reviewing the record in this appeal, it appears appellant would have one read this
phrase restrictively as if it is qualified by the words “liquid” and “unconcentrated.” To the
extent the specification of this application would support such a construction, adoption
of that construction without amendment of the claims would be improper. As stated in
Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476
(Fed. Cir. 1989), “limitations appearing in the specification will not be read into claims,
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