Appeal No. 94-3255
Application 07/673,264
tests to determine whether newly produced auxotrophic bacteria
satisfy one or all the functional limitations encompassed by
the claim language were available. One skilled in the art
cannot screen auxotrophic bacteria for functional limitations
which are not clearly and distinctly stated in the claims,
especially when the specification suggests that the properties
which characterize
the inventive auxotrophic bacteria are substantially
different. Here, the functional limitations Claim 55 places
on appellants’ novel auxotrophic bacteria are so vague and
indefinite that appellants appear improperly to be claiming
subject matter which they do not regard as their invention.
Therefore, I conclude that Claim 55 is unpatentable under 35
U.S.C. § 112, second paragraph. Because the reasons for my
conclusion differ substantially from those provided by the
examiner, I also would denominate my affirmance of the
appealed rejection under
35 U.S.C. § 112, second paragraph, a NEW GROUND OF REJECTION
under 37 CFR § 1.196(b).
Because I hold that the metes and bounds of the claimed
subject matter is unclear, I cannot properly and do not reach
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