Appeal No. 94-4081
Application 07/750,031
examiner questions why would one scan a separation in a capillary
tube when two dimensional scanning has meaning only in a medium
such as a TLC (thin-layer chromatography) plate (main answer,
pages 4-5). Appellants submit that a laser can perform a two
dimensional scan of all sorts of structures including those that
are small with small cross-sectional diameter (main brief, page
18).
The legal standard for indefiniteness under paragraph two of
§ 112 is whether a claim reasonably apprises those of skill in
the art of its scope. Amgen, Inc. v. Chugai Pharmaceutical Co.,
Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir.),
cert. denied sub nom., Genetics Inst., Inc. v. Amgen, Inc., 112
S.Ct. 169 (1991). The definiteness of the language employed must
be analyzed, not in a vacuum, but always in light of the
teachings of the prior art and the application disclosure as it
would be interpreted by one possessing the ordinary level of
skill in the pertinent art. In re Angstadt, 537 F.2d 498, 501,
190 USPQ 214, 217 (CCPA 1976).
The examiner has not presented any reasoning or evidence why
one of ordinary skill in the art would not be apprised of the
scope of claim 46. Laser scanning is admittedly well known in
the art (main brief, page 24). A capillary tube is also well
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