Appeal No. 95-2889 Page 5
Application No. 07/525,231
first cell population without the shifted subset and
with remaining subsets thereof to form a second
count; and
comparing said first and second counts to
obtain the percentage contribution of the cell
population subset of interest.
In claim 10, Appellants further require the microspheres
of claim 1 to be "substantially smaller" than the cells of the
population subset of interest wherein these cells are white
blood cells of interest.
Independent claim 17 is directed to an apparatus with
means corresponding to the steps of claim 1.
35 U.S.C. § 112[2]
The examiner rejected claims 10, 16, 26 and 32, arguing
that the phrase "substantially smaller", as it appears in
these claims, does not "clearly define the metes and bounds of
the invention." (Paper No. 17 at 3). Examples in the
specification of the microsphere size range from 0.7 to 3
microns (Paper No. 1 at 44, 48, and 49).
The Appellants have the burden of defining the invention
precisely. In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023,
1029 (Fed. Cir. 1997). When a word of degree such as
"substantially" is used within a claim, in order to meet their
burden, Appellants must provide some standard for measuring
that degree within their specification. Seattle Box Co. v.
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