Appeal No. 2005-1344 Page 10
Application No. 08/468,610
peptide on the resin-protein/peptide complex remains bound to the resin when in
an aqueous medium of either a high or low ionic strength. Second, that 50
percent or more of the target protein or peptide in an aqueous media will bind the
resin-protein/peptide complex.
We encourage appellants and the examiner to work together to clarify this
issue.
Conclusion
As the record stands before us on appeal, there is no discussion of the
differences in the scope of the claims. Further, to the extent that some claim
terms are construed on this record, the art is applied in a manner that appears to
be contrary to the construction of the claim. Accordingly, we find this record is
not in condition for a decision on appeal. As set forth in In re Zletz, 893 F.2d
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989):
[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. . . . An essential purpose of
patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of
claim scope be removed, as much as possible, during the
administrative process.
For the foregoing reasons, we vacate the rejections of record and remand
the application to the examiner. Prior to taking any further action on the merits of
this application, we encourage the examiner to take a step back and reconsider
the scope of each claim, together with the specification and available prior art.
The examiner should then clearly record a construction of the claims. The
examiner should clearly identify any ambiguities in the meaning of claim terms
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