Appeal No. 2001-0931 Page 8
Application No. 09/104,476
appellants of the defect in their Brief, and provided them with an opportunity to
correct the defect according to the rule. Accordingly, we remand the application
to provide the examiner with an opportunity to address appellants’ defective
Brief.
While we take no position on the merits of this rejection, we note that his
statement (Answer, page 7), questioning claim 5 and directing attention to page
8 of the specification is somewhat less than a clear statement of a rejection.
Upon return of the application, we encourage the examiner to review the claimed
invention together with the specification. If after this review the examiner
believes that a rejection is necessary, the examiner should clearly state the basis
for the rejection and provide appellants with an opportunity to respond. In this
regard, we remind the examiner that the legal standard for indefiniteness under
35 U.S.C § 112, second paragraph, is whether a claim reasonably apprises
those of skill in the art of its scope. See, Amgen Inc. v. Chugai Pharmaceutical
Co., Ltd. 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991).
THE REJECTION UNDER 35 U.S.C. § 103:
In setting forth the basis for the rejection under 35 U.S.C. § 103 the
examiner finds (Answer, page 5), “[t]he claims differ from Phillips [I] in that they
recite a number of limitations directed to the structure of the test strip.” The
examiner, however, fails to explain which of the claimed test strip’s structural
limitations are not taught by Phillips I. Notwithstanding this position, the
examiner finds (Answer, page 6), “[a]ll the reagents, structural limitations such as
an aperture, and coated membrane are conventional in this art ... [and that]
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