Appeal No. 2001-2401
Application 08/277,225
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the
Examiner's Answer for the examiner’s complete reasoning in support of the rejection,
and to the appellants’ Brief and Reply Brief for the appellants’ arguments thereagainst.
As a consequence of our review, we make the determinations which follow.
35 U.S.C. § 112, first paragraph
Claims 1-10 stand rejected under 35 U.S.C. § 112, second paragraph as being
indefinite. It is the examiner's position that ?a separation step is needed between steps
(e) and (f) in order for detection to occurs [sic]. Further it is unclear how a portion of
the tag retained on the solid phase can be detected and then compared to the same
portion of the tag. Appellants' attention is directed to parts (e) and (f) in which the
?portion of said tag” is recited.” Answer, page 3.1
Whether a claim is indefinite depends upon whether those skilled in the art would
understand what is claimed, or the scope or the bounds of the claim, when read in light
of the specification. The threshold step in resolving this issue is to determine whether
the examiner has met his burden of proof by advancing acceptable reasoning of
indefiniteness. Appellants argue that one of ordinary skill in the art reading the
1 The Answer includes duplicate page numbering. Page numbers referred to in
the Answer herein are the actual sequential page numbers of the Answer.
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