Appeal 2007-2236
Application 10/991,738
1 words, how does the limitation distinguish the claimed article from another
2 article?
3 We are not certain of the scope of the claims on appeal. The time for
4 eliminating indefiniteness issues is while a claim is pending before the
5 Patent Office. The public, potential infringers and district court are entitled
6 to clear claims in patents. To put off until licensing negotiations or patent
7 infringement civil action a determination of the scope of a claim is, in the
8 words of Graham v. John Deere Co., 383 U.S. 1, 18 (1966), to debilitate the
9 patent system. Although the Graham words arose in a § 103 context, the
10 rationale supporting those words applies with equal force to issues arising
11 under the second paragraph of 35 U.S.C. § 112. See, e.g., General Electric
12 Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938). Also, as the Federal
13 Circuit has noted, clarification of claim language in the Patent Office avoids
14 the possibility of an applicant obtaining in court a scope of protection which
15 encompasses subject matter that the PTO has not examined. Genentech Inc.
16 v. Wellcome Foundation Ltd., 29 F.3d 1555, 1563-64, 31 USPQ2d 1161,
17 1167 (Fed. Cir. 1994).
18 Since the claims on appeal are deemed to be indefinite and their scope
19 is not clear, we do not reach the Examiner's § 103 rejections. In re Steele,
20 305 F.2d 859, 863, 134 USPQ 292, 295 (CCPA 1962); In re Wilson, 424
21 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). The Examiner's § 103
22 rejections are vacated. See Ex parte Zambrano, 58 USPQ2d 1309 (Bd. Pat.
23 App. & Int. 2000), for an explanation of a decision vacating a rejection.
24
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