Appeal No. 94-4393
Application 07/692,921
the rejected claims. Thus, it is not clear why the claims which depend from claims 1 and 9
are not included in the second rejection.
On return of the application, the examiner should review the two rejections and all of
the pending claims and ensure that the claims are consistently treated.
Relevant Legal Standards
In reviewing the statement of the two rejections which appears on pages 3-4 of the
Examiner’s Answer, it does not appear that the examiner used the appropriate legal
standard in considering issues raised under 35 U.S.C. § 112, second paragraph. For
example, in rejecting claims 1 and 7, the examiner merely questioned whether the word
“subspecies” is vague and indefinite. In so doing, it does not appear that the examiner
has reviewed the supporting disclosure of this application or relevant prior art in an attempt
to determine whether appellants’ use of this word is appropriate. The relevant legal
standard for determining definiteness of claim language is set forth in In re Moore, 439
F.2d 1232, 169 USPQ 236 (CCPA 1971). Therein, the court stated that “definiteness of
the [claim] language . . . must be analyzed--not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.” Moore at
1234, 169 USPQ at 238 (footnote omitted).
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