Appeal No. 2004-1944 Page 4
Application No. 09/255,673
circumscribes a particular area with a reasonable degree of
precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
Here, the examiner has taken the position that the appealed
claims run afoul of the second paragraph of § 112 because “[i]t
is unclear as to what are the features operable which enable the
testing of the biological fluid samples” (answer, page 3). In
arguing against appellant’s considerable opposition to the
examiner’s stated rejection, the examiner (answer, page 5)
inexplicably states that:
35 U.S.C. § 112, second paragraph, does not permit the
examiner to study the applicant’s disclosure, formulate
a conclusion as to what the examiner regards as the
broadest invention supported by the disclosure, and
then determine whether the claims are broader than the
examiner’s conception of what “the invention” is.
Nonetheless, the examiner, after an apparent review of at
least a portion of appellant’s specification with respect to the
claim language in question, goes on to state, at pages 6 and 7 of
the answer, that:
No specific and clear definition of the “features” are
given. In view of the specification, the myriad
examples of the “features” are so varied and broadly
defined, that it is unreasonable to assume th[at] one
of ordinary skill in the art in reading and
interpretating [sic] the claim language would be able
to pinpoint, with any degree of accuracy, just what the
appellant is intending to precisely claim, and
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