Appeal No. 2001-0421
Application 08/926,835
subject to amendment. The more reasonable course of action,
given the lack of an effective exchange of views between
appellants and the examiner in regard to claim construction, is
to allow appellants the opportunity to consider the issues raised
herein and decide how they want to define their invention. After
all it is their invention, not ours.4
We will comment on our colleague’s willingness to excoriate
our decision while failing to assign any responsibility for the
state of the record presented to us for review in this appeal to
appellants and the examiner. Claim 1 has not been amended since
it was filed as part of the original disclosure in the parent
application. As outlined above, the issue of the meaning of the
term “and additionally contains an acid” as used in claim 1 has
never been meaningfully explored by appellants and the examiner.
Indeed, as noted the examiner does not even discuss this aspect
of claim 1 in stating his rejections in the answer. The
messenger should not be harmed for telling appellants and the
examiner to pay closer attention to claim scope during the
administrative examination process.
4Imposition of a claim construction by a merits panel during
an appeal before this Board is not without its own peril. See In
re Priest, 582 F.2d 33, 37-38, 199 USPQ 11, 15 (CCPA 1978).
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