Appeal No. 2002-1751 Page 3
Application No. 09/098,679
1. Claims 1-7 and 9-16 as anticipated by Turanski.
2. Claims 1-4 and 9-12 as anticipated by Ueoka.
3. Claims 5-8 and 13-16 as anticipated by Shaw.
We reverse the rejections for the following reasons.
OPINION
The main purpose of examination is to determine whether the subject matter of the claims
is patentable and, thus, the name of the game is the claims. See In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). The very first question upon examination
is thus: What is the thing that is claimed. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Often, as in
this case, claim interpretation will control the remainder of the decisional process. Id.
In the present case, the Examiner provides a conclusory statement of how the claims are
being interpreted without providing the details of how this determination was made.
Specifically, in response to Appellant’s arguments that the references fail to disclose the pH of
recovered glycerol, the Examiner states that “the claims of the instant application are broad
enough to read on glycerin in a mixture.” (Answer, p. 5). The Examiner states that no isolation
or purification of the glycerin is required (Id.) and that there is no indication that the glycerin
product is limited to an isolated or purified glycerin product (Answer, p. 6).
The basic question we must answer is whether the Examiner’s interpretation is
“reasonable” in light of the evidence before us. To this end we must give the claims their
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007