Appeal No. 2001-1173 Page 4
Application No. 08/614,593
inconsistency.1 Nevertheless, as set forth in In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971), claim language must be analyzed “not in a
vacuum, but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the ordinary
skill in the pertinent art.” In this regard, we note appellants’ specification
discloses (page 19):
The inventors have found that in some instances a biofilm
will not form without the inclusion of host components in the biofilm.
Host components may therefore be added to the growth medium in
the vessel during incubation of the bacteria to form the biofilm.
Host components that may be added include serum protein and
cells from a host organism.
Therefore, it is our opinion that a person of ordinary skill in the art would
understand the term “host material” to be host organism derived components,
such as serum protein and cells, which are added to the growth medium in the
vessel during incubation of the bacteria to form a biofilm.
Finally, the examiner is unclear as to what the “analysis determines” in
claim 14. Answer, page 8. We note again that the examiner fails to refer to
claim 32 that contains the same language as claim 14, but depends from claim
20 instead of claim 1. Despite the preamble of claim 14 which states “[t]he
method of claim 1 wherein the method is used to analyze biofilm forming
organisms that may grow in a host, and the host comprises host material, the
method further including …,” the only limitation set forth in dependent claim 14 is
1 We recognize the examiner’s reference (Answer, page 8) to “claim 14 and all occurrences.”
Apparently, the examiner would like us to guess as to whether he means “all occurrences” in
claim 14, of “all occurrences” in any other claim on appeal. We will not guess as to the
examiner’s intention. Instead, we recognize the examiner’s error in treating the claims in an
inconsistent manner.
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