Appeal No. 2003-2157
Application No. 09/885,311
respect to this ground of rejection is whether the examiner’s
rejection is based on an erroneous interpretation of the claimed
subject matter (Brief, page 6). For reasons which follow, we agree
with the examiner’s claim interpretation.
The examiner and appellants discuss the effect of the
amendments to the specification which were made in the response
dated Feb. 24, 2003, Paper No. 10 (Brief, pages 3-6; Answer, pages
2-3). However, as noted by the examiner (Answer, pages 2-3),
the specification has been objected to under 35 U.S.C. § 132 as
containing “new matter” and this action is petitionable, not
appealable. See In re Rasmussen, 650 F.2d 1212, 1214-15, 211 USPQ
323, 325-26 (CCPA 1981); MPEP § 706.03(o) and § 1002.02(c), 8th
ed., Rev. 1, Feb. 2003. We must consider the record as it stands
on appeal, including the specification as amended.
During prosecution before the Office, the claim language must
be given its broadest reasonable interpretation as commonly used,
when read in light of the specification as it would have been
understood by one of ordinary skill in the art. See In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). The
sole contested language is “random copolymer” as recited in claim 1
on appeal (Brief, page 5). The specification, as amended at page
12, ll. 1-16, teaches that “[r]andom copolymers are comprised of
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