Appeal No. 2002-0444 Page 2
Application No. 09/086,138
the presence of the whole effluent sample is indicative of the presence of
cytotoxic agents in the whole effluent sample.
The reference relied upon by the examiner is:
Jaffe 5,387,508 Feb. 7, 1995
Claims 1 through 15 stand rejected under 35 U.S.C. § 103(a). The examiner
relies upon Jaffe as evidence of obviousness. Claims 1 through 15 also stand rejected
on obviousness-type double patenting grounds on the basis of the claims of Jaffe. We
vacate both rejections and make a new ground of rejection.
DISCUSSION
From a consideration of the issues in this appeal we have concluded that the
claims on appeal are indefinite under 35 U.S.C. § 112, second paragraph, for the
reasons set forth below. As a result, prior art can only be applied against the claims
based upon assumptions or speculation as to the scope of the claims. This is an
improper basis to apply prior art. In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292,
295 (CCPA 1962). Under these circumstances, it is appropriate to vacate the
examiner’s rejections in view of the new ground of rejection set forth below.
NEW GROUND OF REJECTION UNDER CFR 1.196(b)
Claims 1 through 15 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claim 1 is directed to a method for evaluating a whole effluent sample. To
implement this method, claim 1 (a) first requires obtaining a sample, the nature of which
is unqualified. On the other hand, claim 1 (b) requires combining a first aliquot of the
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