Appeal No. 96-2137
Application 07/668,920
delete the word “necrotic” from the preamble. Thus claim 18 as presented in this
appeal is directed to “a method for measuring neoplastic tissue in a mammal . . ..”
DISCUSSION
Having reviewed the record, it is our view that the metes and bounds of the
claims on appeal cannot be readily discerned, i.e., the claims are indefinite under 35
U.S.C. § 112, second paragraph. As indicated in In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971), one is not in a position to determine whether a
claim is enabled under the first paragraph of 35 U.S.C. § 112 until the metes and
bounds of the claim are determined under the second paragraph of this section of the
statute. Accordingly, we vacate the rejection under 35 U.S.C. § 112, first paragraph, as
being nonenabled and make the following new ground of rejection.
NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we make the following new ground
of rejection.
Claims 18, 19, 21 through 28, and 41 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
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