Appeal 2006-1305
Application 10/236,270
It appears that the scope and breadth of the terms “high polar content”
and “low polar content” cannot be ascertained from the Specification. See
Majority 4. If the scope and breadth of the claims cannot be properly
determined, then the claims should be rejected under 35 U.S.C. § 112, ¶ 2.
See In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (if claims do not
“particularly point[ ] out and distinctly claim[ ]”, in the words of section
112, appropriate PTO action is to reject the claims for that reason) and In re
Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)(“[A]
patent applicant has the opportunity and responsibility to remove any
ambiguity in claim term meaning by amending the application.”).
Therefore, I would remand the Application to the Examiner with
instructions to reopen prosecution, requiring that any further action on the
part of the Examiner clearly set forth an explicit construction of the claim
terms in dispute, a detailed analysis of any applied prior art based on such
construction, and specific fact finding and explanation in support of any
rejections.
clj
Cynthia L. Foulke
NATIONAL STARCH AND CHEMICAL COMPANY
10 Finderne Ave.
Bridgewater, NJ 08807-0500
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