Appeal No. 2006-2423 Page 8
Application No. 10/297,871
compound to be a “colorant,” without more evidence, we are disinclined to accept that
all compounds in its scope would function only as colorants, and have no other activity.
The Board is required to give claims their broadest reasonable interpretation that
is consistent with the specification. See e.g., In re Morris, 127 F.3d 1048, 1054-1055,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). “[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 that way can
uncertainties of claim construction be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989). With this guiding principle, we decline to restrict the scope of claim 47
to require it to be for “hair coloring.” Since it appears that the examiner may have
improperly incorporated this limitation into the composition claims, we vacate the
rejection with respect to these claims, remand to the examiner for appropriate action
consistent with this guidance.
Composition claims 37-40 were rejected under 35 U.S.C. § 103(a) as being
unpatentable Gast in view of Lindenbaum as applied to claims 24-30, 33-35, and 47 and
further in view of Samain3. For the same reasons described above, we also vacate
the rejection with respect to these claims, and remand to the examiner for appropriate
action.
3 Samain et al. (Samain), U.S. Pat. No. 5,538,517, issued Jul. 23, 1996
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