Appeal No. 2006-2023 Page 10
Application No. 10/650,785
its broadest reasonable interpretation during patent prosecution.”). While claims are
read in light of the specification, it is inappropriate to read in limitations to a claim
without proper basis therefor. In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1211
(“[T]his court counsels the PTO to avoid the temptation to limit broad claim terms solely
on the basis of specification passages.”)
As noted earlier, the appealed claims were added during prosecution and are not
original claims. Giving the terms of appealed claim 1 their broadest reasonable
interpretation consistent with the accompanying specification, we determine that the
claimed subject matter encompasses a method including the step of simply adding an
ion-exchange resin to the process tank without any dispersion of the resin in the water.
For example, the recitation “adding an ion-exchange resin to the process tank to form a
water-ion-exchange resin mixture” reads on adding a packed deionizing resin cartridge
into a filter housing, which forms a water-ion exchange resin mixture. By contrast, the
‘044 disclosure (including the original claims), when read as a whole, makes it clear to
one skilled in the relevant art that “[t]he ion-exchange resin is dispersed in the water so
as to provide the maximum surface area of resin to absorb the DOC.” (Page 3, lines
4-5.) Indeed, the ‘044 specification, when read as a whole, unequivocally informs one
skilled in the relevant art that dispersion of the resin is an indispensable feature of the
‘044 invention. (See, e.g., page 2, lines 18-20; page 23, line 28; page 27, line 18; page
28, line 19; page 31, line 7; page 34, line 7; page 37, line 7; page 40, line 7; page 45,
lines 7 and 19; page 47, line 7; page 48, lines 2-3; page 49, line 2.) Nowhere in the
‘044 specification is there any indication that the invention encompasses a method in a
dispersing step is not used.
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