Appeal No. 1997-4234
Application No. 08/423,211
be capable of determining the metes and bounds of these claims even when read in
light of the specification. Therefore, we reject claims 1-27 and 29 under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly claim the
subject matter which the appellants regard as their invention.
The examiner's rejection under 35 U.S.C. § 112, second paragraph
The examiner's rejection of claims 1-27 and 29 under 35 U.S.C. § 112, second
paragraph focuses on whether the terminology "sheet-like" is indefinite. (Answer, pages
4-5). However, the examiner fails to explain why one skilled in this art reading the
claims in light of the specification, including the drawings, would be unable to ascertain
the scope of the claimed subject matter as it relates to the use of the terminology
"sheet-like". The examiner's comments at the top of page 5 of the Answer, would
appear to reflect a concern as to whether the invention is enabled throughout the scope
of subject matter encompassed by the claim which includes the terminology "sheet-like"
rather than whether one skilled in this art could determine whether a particular test kit
was encompassed by the present claims. However, this is an issue properly raised
under the enablement provisions of 35 U.S.C. § 112, first paragraph, and is therefore
not before us. In view of the new ground of rejection, we vacate this rejection.
The rejection under 35 U.S.C. § 112, first paragraph
The examiner has rejected claims 1-27 and 29 under 35 U.S.C. § 112, first
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