Appeal No. 2004-1944 Page 5
Application No. 09/255,673
including the metes and bounds of the limitations of
the claim.
However, we find ourselves in agreement with appellant’s
basic position that the examiner has not convincingly explained
why the claim language at issue, as it would have been
interpreted by one of ordinary skill in the art in light of
appellant’s specification and the prior art, fails to set out
and circumscribe a particular area with a reasonable degree of
precision and particularity.
In other words, the examiner has simply not met the initial
burden of establishing why one of ordinary skill in this art
would not be apprised of the scope of the claims. While the
claim limitations concerning the “one or more features” that are
variously worded in the appealed claims as being operable to
enable the testing of the biological fluid sample may be viewed
as relatively broad in scope, breadth does not equate with
indefiniteness. See In re Gardner, 427 F.2d 786, 788, 166 USPQ
138, 140 (CCPA 1970).
Additionally, the examiner’s rejection fails because
appellant’s original application does set forth guidance as to
what is meant by those claim terms. The examiner’s concern about
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