Appeal No. 2001-0421
Application 08/926,835
USPQ2d 1279, 1282 (Fed. Cir. 2000) (quoting 35 U.S.C. § 112,
second paragraph)).
“When the applicant states the meaning that the claim terms
are intended to have, the claims are examined with that meaning,
in order to achieve a complete exploration of the applicant’s
invention and its relation to the prior art.” In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). “[I]f the
claims do not ‘particularly point out and distinctly claim[]’, in
the words of section 112, that which examination shows the
applicant is entitled to claim as his invention, the appropriate
PTO action is to reject the claims for that reason.” Id.
(citing, inter alia, In re Prater, 415 F.2d 1393, 1404, 162 USPQ
541, 550-51 (“claim that reads on subject matter beyond the
applicant’s invention fails to comply with 35 U.S.C. § 112")).
Given the varying claim interpretations of the examiner and
appellants, it is apparent that the claims do not particularly
point out and distinctly claim the invention. It does not appear
that one skilled in the art would be able to determine whether
the claims are limited to (1)the addition of an exogenous acid,
(2)in situ formation of an acid or are intended to encompass both
manners of providing the stated acid since the claims do not
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