Appeal No. 94-3182
Application 07/899,707
a plurality of test tubes each adapted to contain a
sterile aqueous broth, an amount of antibiotic to be
tested and MAI to be assayed; and
means for determining the concentration of said
antibiotic necessary to resist said MAI growth, said
means comprising a plurality of paraffin coated slides,
each of which is adapted to being placed in one of said test
tubes, whereby observation of the growth of said MAI on
each of said slides can be used to determine the
concentration of said antibiotic necessary to resist growth
of said MAI.
30. The apparatus of Claim 29, wherein one of said
test tubes is adapted to be a control test tube
containing no antibiotic.
31. The apparatus of Claim 30, wherein the other
said test tubes are adapted to contain different
concentrations of said antibiotic.
The examiner newly rejected appellant’s claims under
35 U.S.C. § 102(b) over Ollar alone because the examiner found
(Supplemental Examiner’s Answer, page 2, first full
paragraph):
Ollar teaches the apparatus of the instant
invention viz. a plurality of glass test tubes and
a plurality of paraffin-coated slides adapted to be
inserted into the glass test tubes.
The examiner notes that (Supplemental Examiner’s Answer, page
2, second paragraph, to page 3, first paragraph):
. . . it has been held by the courts that the recitation
that an element is “adapted to” perform a function is
not a positive limitation but only requires the ability
to so perform and does not constitute a limitation in
any patentable sense. In re Hutchinson, 69 USPQ 138 . .
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