Appeal 2007-1629
Application 10/138,337
crystallized from the solvent, and extracted. Similarly, it is clear that
“returned to the process” in the second occurrence means – as expressly
stated – that the extractant is “reused for extraction” in the claimed process.
By stating that the solvent or extractant is “returned to the process,” it is
quite clear that they are cycled (Spec. 3: 1-8) back into the TEDA
purification process which is recited in claim 1. Thus, we conclude that
claim 1 conforms to the statutory requirements of §112, second paragraph.
For claim 10, the Examiner contends:
It is not clear what Appellants actually mean by the term ‘cyclic
... hydrocarbons’ in claim 10, because their remarks have
rendered this term indefinite. In its plain meaning this would
be perfectly clear, as it would cover any group which is both a
hydrocarbon and is cyclic. However, earlier remarks (paper of
11/20/2003) stated, “One of ordinary skill in the art would not
refer [to aromatic cyclic hydrocarbons] benzene, toluene, xylem
[sic, xylene], naphthalene etc., as a cyclic hydrocarbon.” This
is an utterly baffling assertion, made without any substantiation
whatsoever. These four are unquestionably cyclic and these are
unquestionably hydrocarbons, so of course one of ordinary skill
in the art would refer to them as cyclic hydrocarbons. It is
therefore clear that Appellants intend some specialized (more
narrow) meaning of ‘cyclic . . . hydrocarbons’ which is
markedly different from its literal meaning, is order to exclude
those four.
(Answer 4-5 (emphasis added).)
We disagree with the Examiner that Appellants’ remarks have the
effect of rendering the claim term “cyclic . . . hydrocarbons” indefinite under
§ 112, second paragraph. During prosecution, claims are given their
broadest reasonable interpretation as they would be understood by persons
of ordinary skill in the art in the light of the Specification. See, e.g., In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re
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