Appeal No. 96-0926
Application No. 07/995,683
founded on the requirement in the second paragraph of 35
U.S.C.
§ 112 that an applicant for patent present claims for that
which applicant regards as his or her invention or if the
rejection is founded on the requirement for particularity in a
claim. Under either theory, the examiner's rejection cannot
be sustained as it lacks any sound factual or legal basis.
Absent evidence to the contrary, the claims presented by
an applicant must be presumed to be for that which applicant
regards as his invention. In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971). Moreover, it is incumbent upon
the examiner to establish that one of ordinary skill in the
art would not have been able to ascertain the scope of
protection defined by the claim when read in light of the
supporting specification. Moore, ibid. This the examiner has
not done. In the first instance, the examiner has not
explained why a "kit" cannot be considered to be an
"apparatus" or "system". Secondly, appellant describes his
invention both as a "kit" and as an apparatus. See page 4,
lines 16 through 27 of the specification. Therefore, we
reverse the examiner's rejection under 35 U.S.C. § 112,
paragraph two.
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