Appeal No. 2002-1361 Page 4
Application No. 09/476,822
examples of such pH indicators, see Specification, pages 29-30, and as the
claims recite correlating the color change or lack thereof to the presence or
absence of H. Pylori in the sample, there is no need to add any specific color
change to the claims.
The examiner’s rejection under 35 U.S.C. § 112, first paragraph, is
reversed.
Claims 8-13 also stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter that applicant regards as the invention.
According to the examiner,
[i]n claim 8 and all occurrences, “designated” volume is
unclear as to who and why designated the volume. There may be
some confusion regarding the contacting and incubating steps. If
no incubating such as in claim 9(f) takes place, it would appear the
invention would not work because a waiting period is required. The
correlating steps as written do not state directly what the correlation
may be. Further what the color change may be based upon is not
set forth.
Examiner’s Answer, page 5.
If we understand the rejection correctly, the examiner’s first concern is the
use of “designated” renders the claim indefinite because one skilled in the art
would not understand who designated the volume. The specification, however,
defines the volume as “5 to 10 ml or more,” id. at 18, thus one of skill in the art
would understand the meaning of designated.
The examiner’s second concern appears to be that there is no specific
incubation step. The rejection states that “[i]f no incubating such as in claim 9(f)
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