Appeal No. 1996-0848
Application 07/624,053
rejection under 35 U.S.C. § 112, first paragraph.
The rejection under 35 U.S.C. § 112, second paragraph
Claims 16-22, 24, 25, 27-32, 34, 35, and 42 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly claim the
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invention. The examiner urges that the terms “producing” “produces” “produced” and
“secretes” refer to the production of MCF and the claims are unclear and do not particularly
point out the invention since the cells are not capable of producing the factor in the
absence of the mitogen and the claims do not reflect the presence of the mitogen.
(Answer, page 10; Second Supplemental Answer, page 2).
The examiner has the initial burden of demonstrating indefiniteness of the claims. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In our
opinion, this rejection falls by its own weight. The language of the claims indicates that the
claimed cell line produces the factor. If a cell line is incapable of producing the described
factor, it does not fall within the scope of the claims before us. We point out that it is well
established that "definiteness of the language employed must be analyzed, not in a
1 In setting forth the basis of this rejection the examiner states that the rejection of
"claims 22-35" still stands. (Second Supplemental Answer, page 2). Manifestly, that
reference constitutes an inadvertent error. Since each independent claim includes at least
one form of the terminology on which the rejection is based, we have assumed the
rejection is applicable to all of the appealed claims.
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