Appeal No. 2001-1173 Page 5
Application No. 08/614,593
the text following the transitional phrase “the method further including.”
Therefore, claim 14 further limits claim 1 by requiring that the biofilm forming
organisms be incubated in the presence of host material in the liquid growth
medium. Accordingly, since the term “analyze” is not a limitation added in claim
14, the examiner’s issue must be concerned with the term “analyzing” as it
appears in claim 1, from which claim 14 depends. We however, have already
discussed, see supra, the term “analyzing” as it appears in claim 1. As
discussed supra, appellants expressly state (Brief, page 13), “‘assaying the
number of organisms …’, is the analyzing step.” Therefore, despite appellants’
argument (Brief, page 14) that “what the analysis determines does not need to
be seen … applicant [sic] is not required to state all possible environments in
which the method may be used,” according to appellants own interpretation of
the claims “analyzing” refers to assaying the number of organisms forming the
biofilm at the plural biofilm adherent sites, as set forth in claim 1. We agree. We
also note that the same reasoning applies to claim 32 as it depends from claim
20.
For the foregoing reasons, we reverse the rejection of claims 1-14 and
20-32 under 35 U.S.C. § 112, second paragraph.
THE REJECTION UNDER 35 U.S.C. § 103:
The examiner relies (Answer, page 5) on Miyake to teach “[c]ells were
adhered to the bottom of a 96 well tissue culture plate, incubated in serially
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