Appeal No. 98-2769
Application 08/485,960
As for independent claim 21, we view this “system” claim as being essentially a ”kit” claim,
wherein the system or kit includes an electrotransport device of the nature set forth in the claim and a
plurality of different therapeutic agent sources that can be selectively used, one at a time, in the device
to vary the therapeutic agent delivery rate. Thus, we view the scope and content of the subject matter
embraced by claim 21 on appeal as being reasonably clear and definite, and as fulfilling the requirement
of 35 U.S.C. § 112, second paragraph, that it provide those who would endeavor, in future enterprise,
to approach the area circumscribed by the claim, with the adequate notice demanded by due process
of law, so that they may more readily and accurately determine the boundaries of protection involved
and evaluate the possibility of infringement and dominance. See, In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970). Given the foregoing, we will not sustain the examiner's
rejection of appellants’ claim 21 under 35 U.S.C. § 112, second paragraph, or that of claims 22
through 27 which depend therefrom.
We next look to the examiner's prior art rejections of the appealed claims, turning first to the
rejections of claims 1, 2, 5 through 8, 10 through 18 and 20 through 27 under 35 U.S.C.
§ 102(b) as being anticipated by Sibalis ‘479, and claims 1 through 27 as being anticipated by Phipps
‘894. Given our determinations above concerning the indeterminate scope and content of claims 1
through 20 on appeal under 35 U.S.C. § 112, second paragraph, we find that it is not possible to apply
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