Appeal No. 94-3182
Application 07/899,707
determine the concentration of an antibiotic necessary to
resist MAI growth on the slides.
We hereby vacate the examiner’s rejection in this case.
We cannot here assume ab initio, as the court did in In re
Pearson, 494 F.2d at 1403, 181 USPQ at 644 (CCPA 1974), that
appellant’s claims comply with the definiteness requirement of
the second paragraph of 35 U.S.C. § 112. The phrase “adapted
to contain” does not clearly define, directly or indirectly,
some characteristic not found in the old composition.
Thus, the examiner’s rejection under 35 U.S.C. § 102(b)
is vacated.
New Ground of Rejection Under 37 CFR § 1.196(b)
For the reasons stated above, we hereby newly reject
Claims 29, 30 and 31 under 35 U.S.C. § 112, second paragraph.
It is not clear from the teaching of the specification that
the test tubes which comprise the apparatus of Claims 29, 30
and 31 “contain [(1)] a sterile aqueous broth, [(2)] an amount
of antibiotic to be tested and [(3)] MAI to be assayed” (Claim
29). Clarification of this ambiguity is readily accomplished
by amendment. If the tubes contain broth, contain antibiotic
and/or contain MAI, applicant should so state explicitly to
delineate the claimed subject matter from the apparatus
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