Ex parte RAULSTON et al. - Page 9




                 Appeal No. 1996-3887                                                                                                                   
                 Application 07/883,434                                                                                                                 
                          individual nematode from another nematode and is pure nematode as it is a                                                     
                          nematode and not part some other worm or multicellular animal, rather the                                                     
                          nematode is per se pure nematode regardless of where it is located or                                                         
                          produced . . .                                                                                                                
                          According to the examiner’s analysis and conclusion, a nematode “isolated from                                                
                 the environment” is always identical to a nematode “in the environment.”  This position is                                             
                 untenable on its face.                                                                                                                 
                          Accordingly, the rejection of claims 16 through 19, 21, 22, 42, 46 and 47 under 35                                            
                 U.S.C.  102(b) is reversed.                                                                                                           


                 35 U.S.C.  112, second and forth paragraphs                                                                                           
                          All of the claims on appeal stand rejected as indefinite under 35 U.S.C.  112,                                               
                 second paragraph, for the reasons set forth on page 16 of the Examiner’s Answer (paper                                                 
                 no. 15) and pages 18 through 21 of the Supplemental Examiner’s Answer (paper no. 19).                                                  
                 Claims 16, 46 and 47 are separately rejected under 35 U.S.C.  112, second paragraph,                                                  
                 for the reasons set forth on page 23 of paper no. 19.                                                                                  
                          Merely by way of example, the examiner believes that claim 16 (drawn to a                                                     
                 “composition for use as a biopesticide”) is indefinite because “it is not clear . . . that the                                         
                 insecticidally effective amount of the nematode is the biopesticide amount or whether the                                              
                 inert carrier is the biopesticide or whether or not the ‘inert carrier’ is inert to the                                                
                 environment or inert to the nematode” (paper no. 15, page 16).  The phrase “isolated from                                              
                 the environment” is said to be indefinite because it is not clear whether it refers to “isolated                                       

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