Appeal No. 2002-0747 Page 8
Application No. 09/006,982
rejections establishes a prima facie rejection of indefiniteness, which apparently is the
examiner’s position.
On the basis of the reasons expressed in the foregoing paragraphs, this rejection
under the second paragraph of Section 112 is not sustained.
(4)
In a second rejection under the second paragraph of Section 112, claims 1-17
are rejected as being indefinite on the basis that they are “incomplete for omitting
essential elements, such omission amounting to a gap between elements.” Here, the
examiner refers to Section 2172.01 of the MPEP and sets forth as the single omitted
element “[a] user/recipient respiratory interface in order to facilitate delivery of gases” to
a user (Answer, pages 5 and 6). The referenced section of the MPEP states that a
rejection under the second paragraph of Section 112 is proper when a claim “fails to
interrelate essential elements of the invention as defined by applicant(s) in the
specification.” The appellants have argued that the elements set out by the examiner
were not defined in their specification as essential elements of the invention, and on
that basis this rejection is improper. We agree, and further note that in our view one of
ordinary skill in the art5 would have possessed sufficient skill to understand from the
5 Skill is presumed on the part of the artisan, rather than the lack thereof. In re Sovish, 769 F.2d
738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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