Appeal No. 96-3717
Application 08/229,115
over Solomon or Lambert, but we will reverse the examiner’s rejection of claims 12, 13, 16-22 and 25-30
under 35 U.S.C. § 102(b) as anticipated by Lambert and the examiner's rejection of claims 12-29 under
35 U.S.C. § 112. We also enter a new ground of rejection of claims 12-31 and remand the application
for the examiner to consider the patentability of the claims pending in this application over a reference
supplied to this merits panel by the attorney of record during oral hearing.
REJECTION UNDER 35 U.S.C. § 112
The examiner rejected claims 12-29 under 35 U.S.C. § 112, second paragraph, because it is
“unclear what temperature is the body temperature of a mammal” (answer: p. 3). The legal standard for
indefiniteness under the second paragraph of 35 U.S.C. § 112 is whether a claim reasonably apprises those
of skill in the art of its scope. See Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200,
1217, 18 USPQ2d 1016, 1030 (Fed. Cir.), cert. denied sub nom., Genetics Inst., Inc. v. Amgen, Inc.,
112 S.Ct. 169 (1991). The definiteness of the language employed must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and the application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art. See In re Angstadt, 537 F.2d 498, 501, 190
USPQ 214, 217 (CCPA 1976).
The examiner argues that all of the properties set forth in the claims are dependent on “body
temperature” and that since the temperature range is not disclosed in the specification, the properties are
“unascertainable.” According to appellants, the claimed medical tube “is applicable to mammals including
humans [sic, “non-humans] (e.g. cow, rabbit, horse, sheep, monkey, dog, cat, etc.)” and that “the body
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