Appeal No. 2001-1173 Page 3
Application No. 08/614,593
(Claims must “reasonably apprise those skilled in the art” as to their scope and
be “as precise as the subject matter permits.”).
At page 8 of the Answer, the examiner sets forth three reasons for finding
the claims indefinite. We will consider each in turn.
First, the examiner finds (Answer, page 8), “[c]laims 1 and 20 are directed
to growing and analyzing a biofilm, but no such steps are included in the claims.”
According to the examiner (Answer, page 10), “the preambles of claims 1 and 20
are inconsistent with the rest of the claims.” In response, appellants argue (Brief,
page 13), “[i]n both claims [1 and 20], there are the steps of ‘incubating … to …
create … a … biofilm’, which is the growing step, and ‘assaying the number of
organisms …’, which is the analyzing step. This is clear and there is nothing
indefinite about it.” It appears that instead of using the language appellants
chose to define their claimed invention, the examiner would prefer appellant to
use the exact words appellants used in the preamble of their claim. The
examiner, however, provides no precedent to support his preferred word usage.
As set forth supra, the claims must reasonably apprise those skilled in the art as
to their scope and be as precise as the subject matter permits. On this record, it
is our opinion, that claims 1 and 20 meet this requirement.
Second, the examiner finds (Answer, page 8), the term “host material” as
it appears in claim 14 is unclear. According to the examiner (Answer, page 10),
“one would know what a host may be but not what “host material” may be.” We
note with interest that claim 32 also contains the term “host material” in the same
context as it is used in claim 14, yet claim 32 is not included in the examiner’s
discussion of the rejection, and the examiner offers no explanation for this
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