Appeal No. 2005-0855 8
Application No. 10/269,807
do not require the composition of the specimen to be unknown, and
are not directed to a method for determining the composition of
the specimen.
Finally, while the appellant’s disclosure does not convey
much detail as to the various algorithms described therein, these
algorithms admittedly are generally known in the art. The
examiner has failed to advance any cogent reasoning as to why the
disclosure would not have enabled a person having ordinary skill
in the art to employ these algorithms, without undue
experimentation, to the extent required by the appealed claims.
Hence, the examiner’s position that the appellant’s
disclosure, considering the level of ordinary skill in the art as
of the date of the application, would not have enabled a person
of such skill to make and use the claimed invention without undue
experimentation is not well taken. Therefore, we shall not
sustain the standing 35 U.S.C. § 112, first paragraph, rejection
of 1 and 8 through 39.
III. The 35 U.S.C. § 112, second paragraph, rejection
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
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