Appeal No. 94-4081
Application 07/750,031
Claim 46 stands rejected under 35 U.S.C. § 112, second
paragraph, “as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention” (main answer , page 4). Claims 42-45 4
stand rejected under 35 U.S.C. § 103 as unpatentable over Ma. We
have considered all the evidence and argument of record,
including the main brief, the main answer, and the corresponding
three reply briefs and supplemental answers. We affirm the
rejection under § 103 but reverse the rejection under § 112,
second paragraph, for reasons which follow.
OPINION
A. The Rejection under 35 U.S.C. § 112, Second Paragraph
Claim 46 recites that the medium for separating a mixture is
contained within a capillary tube. The examiner states that
claim 46 (incorrectly noted as claim 48 on page 4 of the main
answer) includes the limitation of claim 42 of “laser scanning a
laser beam in a two dimensional scan across the medium”. The
4 Claim 46 was finally rejected under 35 U.S.C. § 112, first and second
paragraphs (see the final rejection dated Sept. 30, 1992, Paper No. 14).
However, the examiner’s answer dated Sept. 1, 1993 (Paper No. 21) did not repeat
the rejection of claim 46 under the first paragraph of section 112, only
rejecting this claim under the second paragraph of section 112. Therefore this
merits panel takes the rejection of claim 46 under the first paragraph of section
112 as having been withdrawn. See the MPEP, § 1208, page 1200-15, 6th ed., Rev.
3, July 1997.
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