Appeal No. 2000-0526
Application No. 08/818,958
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new grounds of rejection.
Claims 2, 3, 9 and 10 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope.
See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994).
The preamble of claim 2 is not commensurate in scope with
the body of the claim, thereby rendering the scope of the
claim confusing. The preamble of claim 2 recites a method for
sequestering gas from therapeutic fluid in a plungerless
syringe. The body of the claim, on the other hand, recites
steps of docking, orienting and urging, which appear to
comprise the method for sequestering gas from therapeutic
fluid, and an additional step of injecting the therapeutic
fluid, which, as we see it, is not part of the method for
sequestering gas from therapeutic fluid. In light of this
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