Appeal 2007-0909
Application 10/881,407
Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989). The Examiner has the burden of interpreting a claim as the first
step in determining whether the subject matter as claimed satisfies statutory
requirements.
The Examiner does not interpret the subject limitation in the Answer.
In response to Appellants’ statement in the Amendment filed August 19,
2005, that “claim 10 is amended to include the heat integration of the fuel
cell anode exhaust” as explained with reference to “Fig. 1 of the present
application” (Amendment 7), the Examiner states “Applicant is [sic]
reminded that limitations of the specification cannot be read into the claims”
(Final Office Action 5). Appellants provide the same explanation in the
Brief (Br. 3 and 5). The Examiner’s view of the scope of claim 10 is not
apparent from the statement of the ground of rejection and indeed,
Appellants contend the Examiner exhibits a “continuing pattern of
misapplying the teachings of the prior art beyond its reasonable limits in
order to reach subject matter taught and claimed by Appellants” (Reply
Br. 1).
We agree with the Examiner that ordinarily the limitations of a
particular embodiment are not read into a claim. See, e.g., Zletz, 893 F.2d at
321-22, 13 USPQ2d at 1322. However, the difficulty we have with claim 10
in any event is that we cannot find any basis in the claim language or in the
written description in the Specification to guide our interpretation of the
language “the unreacted gas . . . is configured to exchange heat to produce
steam” (emphasis supplied). Indeed, the only language in the Specification
which appears to apply to such “gas” and a means to “exchange heat” to
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