Appeal No. 1998-2643
Application 08/549,349
enter a new ground of rejection pursuant to the provisions of
37 CFR § 1.196(b). Our reasons follow.
OPINION
A. The Rejection under 35 U.S.C. § 112
Claims 33-35 and 37 stand rejected under 35 U.S.C. § 112
by the examiner because “the term ‘selected’ is vague and
indefinite.” Answer, page 4. The examiner bears the initial3
burden of presenting a prima facie case of unpatentability,
whether the rejection is based on prior art or any other
ground. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). “The legal standard for
definiteness [under section 112, ¶2] is whether a claim
reasonably apprises those of skill in the art of its scope.”
3 We note that the examiner has not specified what
paragraph of section 112 forms the basis for this rejection
(see the Answer, page 4). However, the examiner did specify
the basis for this rejection in the Final Rejection (see the
Office action dated Apr. 22, 1997, Paper No. 8, page 2).
Accordingly, we review this rejection under the requirements
for the second paragraph of section 112.
4
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