Appeal No. 2001-0421
Application 08/926,835
the examiner’s assertions in regard to the prior art purportedly
teaching in situ acid formation are of little help absent a
thorough construction of the claims under review and explanation
why the purported teachings of the references are relevant to the
claims as construed.
It is clear that prior to our decision today appellants and
the examiner were content to argue their respective positions
absent meaningful claim construction. After today, they cannot
so proceed. Rather, they must confront the ambiguous claim
language and move forward. It may be that appellants understand
their invention to be directed to exogenous acid addition to the
“reaction mixture” as argued in this appeal instead of in situ
formation of an acid as the examiner believes is suggested by the
applied prior art. If so, the posture of the case as of today
permits appellants to clarify the noted ambiguous language and
claim what they regard to be their invention in accordance with
35 U.S.C. § 112, second paragraph. If appellants submit such an
amendment, the examiner will have to reconsider the patentability
of the claims in light of all relevant prior art.
We decline to impose our own version of the scope of the
claims in the context of this appeal proceeding as our colleague
would prefer since the claims are before the USPTO and are now
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