Appeal No. 2005-1422 Page 6
Application No. 09/997,522
appellants (Brief, page 46), “the terms ‘purified’ and ‘isolated’ are not exactly the
same, and [therefore] the scope of the claims at issue differ….”
With reference to Soukhanov, the examiner finds (Supplemental Answer,
page 20),
Purified is a relative term, and only means ‘removed from its
natural source’, unless otherwise defined in the specification.
[Soukhanov] … defines “isolate” as (1) to set apart from a group or
whole. (2) to place in quarantine. (3) to obtain in an uncombined
form. (4) to render free of external influence. [Soukhanov] …
defined “purify” as (1) to rid of impurities. (2) to rid of foreign or
unwanted elements. Neither “purified” nor “isolated” specifically
mean homogeneous. Therefore, unless otherwise defined,
‘isolated’ means the same as ‘purified’ [sic], and ‘isolated and
purified’ [sic] is merely redundant.
According to the examiner (id.), the specification fails to define either term.
Since the specification is the same for the instant application as well as
the ‘597 patent, we understand the examiner’s assertion to be that the terms are
not defined as they relate to a polynucleotide that encodes a polypeptide
comprising the amino acid sequence of SEQ ID NO:2 in either the instant
specification or the ‘597 patent. In response, appellants argue (Reply Brief, page
14, emphasis added), “the term ‘purified’ would encompass the separation of a
pre-existing object from other materials while the term ‘isolated’ could additionally
encompass the production of an object in an environment separate from other
materials.” While appellants may have intended their claim to be read as set
forth above, appellants fail to direct our attention to any portion of their
specification, and we find none, that supports their interpretation of the claim. 35
U.S.C. § 112, second paragraph puts the burden of precise claim drafting
squarely on the applicant. In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023,
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