Appeal No. 2006-0148 Page 3
Application No. 09/933,309
2. Definiteness
The examiner rejected claim 16 under 35 U.S.C. § 112, second paragraph, as
indefinite. The examiner cited two bases for this rejection. First, the examiner
concluded that
Claim 16 is indefinite because the method comprises regenerating the
patient’s involuted thymus, but the steps of regenerating the involuted
thymus have not been taught. . . . The claim does not set forth any steps
involved in the method/process of regenerating an involuted thymus. A
claim is indefinite where it merely recites a use without any active, positive
steps delimiting how this use is actually practiced.
Examiner’s Answer, page 4.
We will reverse this basis of the rejection. The examiner appears to be relying
on Ex parte Erlich, 3 USPQ2d 1011 (BPAI 1986), for the cited rule. The holding of that
case, however, does not apply here. The relevant claims in Erlich recited a “process for
using monoclonal antibodies [specific for human fibroblast interferon] to isolate and
purify human fibroblast interferon” or a “process for using monoclonal antibodies
[specific for human fibroblast interferon] to identify human fibroblast interferon.” Id. at
1012. The claims had been rejected under 35 U.S.C. § 112, second paragraph, as
incomplete because they did not recite any steps. Id. at 1017. The Board affirmed,
holding that “a method claim should at least recite a positive, active step(s) so that the
claim will ‘set out and circumscribe a particular area with a reasonable degree of
precision and particularity’ and make it clear what subject matter these claims
encompass, as well as making clear the subject matter from which others would be
precluded.” Id. (citations omitted).
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