Andreas Heilmann et al.

Patent Trials and Appeals Board

Dec 5, 2019

12928701 - (D) (P.T.A.B. Dec. 5, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/928,701 12/16/2010 Andreas Heilmann EPPE001 7555
90101 7590 12/05/2019
Friedrich Von Rohrscheidt
7400 Whitepine Road
Richmond, VA 23237
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/05/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
brendaski3@aol.com
fvonrohr@aol.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS HEILMANN, HEIKO MUELLER,
KAI MARSCHNER, and BERT-OLAF GRIMM

Appeal 2018-001870
Application 12/928,701
Technology Center 3700
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
JUSTIN BUSCH, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
LARRY J. HUME.

Opinion Dissenting filed by Administrative Patent Judge JUSTIN BUSCH.

HUME, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Andreas Heilmann et al.,
appeal from the Examiner’s decision rejecting claims 1, 3, and 7–14, which
are all claims pending in the application. Appellant has canceled claims 2,
and 4–6. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Eppendorf
AG. Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
The claims are directed to a laboratory centrifuge with compressor
cooling. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to a laboratory centrifuge, and
more particularly to a laboratory centrifuge including a rotor driven by a
centrifuge motor and a cooling device including a compressor, wherein the
compressor is a rotation compressor.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal (italics added to contested prior-art limitations, and underlining
added to contested limitations under § 112, ¶ 2):
1. A centrifuge, comprising:
a rotor driven by a centrifuge motor; and
a cooling device including a compressor,
wherein the centrifuge rotates at speeds between 16,000
RPM and 25,000 RPM,
wherein the compressor is a rotating piston compressor,
wherein the rotating piston compressor compresses a
refrigerant that is in contact with the rotating piston,
wherein the centrifuge is configured to reach a remixing
rate that is less than or equal to 20% where the remixing rate is
equal to (centrifuged value - diffusion value) x 100/100%-value

2 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
July 9, 2017); Examiner’s Answer (“Ans.,” mailed Oct. 3, 2017); Final
Office Action (“Final Act.,” mailed Nov. 17, 2016); and the original
Specification (“Spec.,” filed June 27, 2014) (claiming benefit of
US 61/284,365, filed Dec. 17, 2009). Appellant did not file a Reply Brief in
response to the factual findings and legal conclusions in the Examiner’s
Answer.
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for a 10 mN Tris-solution and a salt concentrate colorant
solution with a density of 1.2 g/ml, and
wherein at least one additional rotating piston compressor
is disposed in parallel with the rotating piston compressor.
10. A centrifuge, comprising:
a rotor driven by a centrifuge motor; and
a cooling device including a compressor,
wherein the centrifuge rotates at speeds between 16,000
RPM and 25,000 RPM,
wherein the compressor is a rotating piston compressor,
wherein the rotating piston compressor compresses a
refrigerant that is in contact with the rotating piston, and
wherein the centrifuge is configured to reach a remixing
rate that is less than or equal to 20% where the remixing rate is
equal to (centrifuged value - diffusion value) x 100/100%-value
for a 10 mN Tris-solution and a salt concentrate colorant
solution with a density of 1.2 g/ml.
REFERENCES
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Rigney US 3,064,449 Nov. 20, 1962
Evans, III et. al. (“Evans”) US 2002/0077239 A1 June 20, 2002
Takahashi et al. (“Takahashi”) US 2008/0132395 A1 June 5, 2008
Yamaguchi et al. (“Yamaguchi”) US 2009/0013714 A1 Jan. 15, 2009
Takamura et. al. (“Takamura”) JP 05228401 A Sept. 7, 1993
Applicant’s Admitted Prior Art, Spec., ¶ 4, hereinafter “AAPA”.
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REJECTIONS3
R1. Claims 1, 3, and 7–134 stand rejected under 35 U.S.C. § 112(b)
or (pre-AIA) 35 U.S.C. § 112, second paragraph as being indefinite. Final
Act. 2; Ans. 2.
R2. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Takamura, Rigney, and
AAPA. Final Act. 8; Ans. 5.
R3. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Takamura, Yamaguchi, and
AAPA. Final Act. 9; Ans. 7.
R4. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Evans, Rigney, and AAPA.
Final Act. 11; Ans. 9.
R5. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Evans, Yamaguchi, and
AAPA. Final Act. 12; Ans. 11.

3 We note the Examiner withdrew several rejections in the Answer. See
Ans. 21 (“WITHDRAWN REJECTIONS”). We further note the large
number of rejections initially made by the Examiner of claims 1, 3, and 7–14
under 35 U.S.C. § 103(a) in the Final Action, and the lesser, but still
relatively large number of prior art rejections restated in the Answer appear
to be merely cumulative, and not in accordance with compact examination
practice. See generally MPEP §§ 706.02 (“Rejection on Prior Art”) and 2103
(“Patent Examination Process”).
4 We are uncertain as to why claim 14, depending from claim 10, was
omitted in the explicit statement of indefiniteness Rejection R1.
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R6. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Takamura, Rigney, and
Takahashi. Ans. 13.
R7. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Takamura, Yamaguchi, and
Takahashi. Ans. 15.
R8. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Evans, Rigney, and
Takahashi. Ans. 18.
R9. Claims 1, 3, and 7–14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Evans, Yamaguchi, and
Takahashi. Ans. 19.
CLAIM GROUPING
Based on Appellant’s arguments (Br. 14–66) and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejections
R2 through R9 of claims 1, 3, and 7–14 on the basis of representative
claim 1. We address separately argued indefiniteness Rejection R1 of
claims 1, 3, and 7–13, infra.
ISSUES AND ANALYSIS
We agree with particular arguments made by Appellant with respect
to Rejections R1 through R9 of claims 1, 3, and 7–14. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
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For essentially the same reasons argued by Appellant (id.), we reverse
the Examiner’s rejection of independent claim 1, and also the rejection of
independent claim 10, which recites the disputed limitation in commensurate
form. For the same reasons, we also reverse the rejections of all claims that
depend therefrom.
1. § 112, ¶ 2, Rejection R1 of Claims 1, 3, and 7–13
Issue 1
Appellant argues (Br. 14–21) the Examiner’s rejection of claims 1, 3,
and 7–13 under 35 U.S.C. § 112, second paragraph, as being indefinite is in
error. These contentions present us with the following issues:
Did the Examiner err (Final Act. 2–3) in determining the following
limitations are indefinite?
(a) the recitation of “a rotating piston compressor” in independent
claims 1 and 10 renders the claims on Appeal indefinite; and
(b) the recitations of “the centrifuge is configured to reach a remixing
rate is less than or equal to 20%” in claims 1 and 10, or “17%” in claims 7
and 12, or “14%” in claims 8 and 13, and “wherein the remixing rate is equal
to (centrifuged value - diffusion value) x 100/100%-value for a 10 mN [sic]
Tris-solution and a salt concentrate colorant solution with a density of 1.2
g/ml.”
Principles of Law
“[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
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the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
(2014). Further, we give pending claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
Am. Acad., 367 F.3d at 1364.
Analysis
(a) rotating piston compressor
The Examiner concluded:
In regard to claims 1, 10, the recitation of “a rotating piston
compressor” is indefinite insofar as the applicant maintains that
(remarks dated 6/4/2015, page 9, para. 1, and page 7,
3/15/2016) that the prior art does not teach a rotating piston
compressor; the broadest reasonable interpretation of “rotating
piston compressor” is a compressor having a member that
rotates to create compression. The allegations create uncertainty
as to what the recitation requires. There is no other definition
provided by the applicant and therefore there is no way to
discern what the scope of the recitation includes if it does not
have the above interpretation and therefore insofar as any other
interpretation is used, but is not delineated, such is considered
indefinite and indeterminate.
Final Act. 2.
Appellant argues the phrase “rotating piston compressor” is a well-
understood term in the art, and offers extrinsic evidence in the form of
website citations, and an indication of a large number of issued patents in
which this phrase is allegedly used. See Br. 14–19.
On this record, we are persuaded that the term “rotating piston
compressor” is sufficiently definite to the extent that a person skilled in the
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art would be informed as to the scope of the invention. See Nautilus, 572
U.S. at 901.
(b) remixing rate
The Examiner determined the “remixing rate” limitations are
indefinite
first because the functional operation of centrifuging a
particular substance such that a certain remixing rate results is
not a structure of the centrifuge and there is no way to
determine what structure is included and excluded by the
functional ability to operate the centrifuge as claimed.
Especially as the specification admits that centrifuges with
higher speeds of up to 25,000 rpm are able to provide
“satisfactory” re-mixing (see spec para. 4). The particular fluids
and recited function do nothing to distinguish the structure of
the centrifuge other than it operate at high enough speeds to
create separation of the claimed substances. This does not
further limit the structure of a centrifuge in any definite and
discernable way as the claims already recite the speed
capability of the centrifuge.
Lastly, despite the applicant’s allegations that the prior
art is incapable of the remixing rates, it does not appear that a
Section 112, first paragraph - new matter or enablement
rejection are warranted at present. This is because, it is
considered that all that is required to be capable of the remixing
limitations is a centrifuge that can operate at 16,000 rpm.
However, assuming arguendo that this determination is
overcome with evidence that shows that some other structure is
required; such a showing would have to be supported by the
specification and there does not appear to be any such structure
whatsoever other than the ability to operate at the stated speed.
Final Act. 3.
In response, Appellant argues “[t]here is no doubt one of ordinary
skill in the art would be able to determine the scope of the claim. To put it
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another way, there is no requirement that every possible structure be spelled
out that meets the claim.” Br. 19. Appellant further argues:
The claimed remix rate is already a quantitative metric,
there is a formula in the specification and the formula is even
recited in the claim, and paragraphs [0039] and [0040] detail
inventive centrifuges having a remix rate within the claimed
amount and prior art centrifuges having a remix rate in excess
of the claimed amount.
For the foregoing reasons, the rejection of the use of the
remix rate in the claims as indefinite under 35 U.S.C. 112(b) or
35 US.C. 112 (pre-AIA), second paragraph should be reversed.
Br. 20–21.
We are persuaded by Appellant’s argument, and observe that the
Examiner appears to have conflated the requirement for written description
and/or enablement under 35 U.S.C. § 112, first paragraph, with the
requirement for definiteness under § 112, second paragraph.
Accordingly, we do not sustain the Examiner’s indefiniteness
Rejection R1 of claims 1, 3, and 7–13.
2. § 103 Rejection R2 of Claims 1, 3, and 7–14
Issue 2
Appellant argues (Br. 35–39) the Examiner’s Rejection R2 of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of
Takamura, Rigney, and AAPA is in error. These contentions present us with
the following dispositive issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a centrifuge “configured to reach a remixing rate that is less than
or equal to 20% where the remixing rate is equal to (centrifuged value -
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diffusion value) x 100/100%-value for a 10 mN Tris-solution and a salt
concentrate colorant solution with a density of 1.2 g/ml,” as recited in
claim 1?
Principles of Law
The ultimate issue of obviousness is a matter of law that turns on four
underlying factual determinations: (1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) objective indicia of
nonobviousness (secondary considerations). See Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966), as reaffirmed by KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 406 (2007).
Analysis
Appellant contends:
[E]ven if alleged Applicant’s admitted prior art teaches
centrifuges operating at 16000 to 25000 RPMs, which
Applicant denies, neither Takamura nor Rigney nor the
Applicant admitted prior art teach or suggest the remaining
features of claim 1 nor claim 10 as follows . . . . “wherein the
centrifuge is configured to reach a remixing rate that is less than
or equal to 20% where the remixing rate is equal to (centrifuged
value – diffusion value) x 100/100%-value,” is not disclosed
and is not inherent.
Br. 36.
We have reviewed the Examiner’s rejection under § 103(a) in both the
Final Action and Examiner’s Answer, and do not find any portion of the
original rejection or restated rejection in the Answer which addresses this
limitation in any manner whatsoever in connection with independent
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claim 1, or independent claim 10, which recites the dispositive limitation in
commensurate, if not identical, form. 5
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art combination to teach or suggest the dispositive limitation of claim 1, such
that we find error in the Examiner’s resulting legal conclusion of
obviousness.
Accordingly, we do not sustain the Examiner’s obviousness Rejection
R2 of independent claim 1, and grouped claims 3 and 7–14 which stand
therewith. See Claim Grouping, supra.
3. § 103 Rejections R3–R9 of Claims 1, 3, and 7–14
Appellant argues the Examiner’s cumulative Rejections R3 through
R9 of claims 1 and 10 under 35 U.S.C. § 103(a) as being obvious over the
various combinations of prior art combinations assembled by the Examiner
are in error for the same reasons identified above with respect to the
dispositive limitation identified in Rejection R2, Issue 2, supra. See, e.g.,
Br. 40.6

5 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
6 We note an original rejection invoking Takahashi was phrased by the
Examiner as “[c]laims 1, 3, 7–14 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over any of the rejections above and further in
view of Takahashi (US 2008/0132395).” Final Act. 12. Although the
Examiner restated this original rejection as Rejections R6 through R9 (our
labeling) in the Answer, we note Appellant addressed the inadequacy of
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Again, we determine that no portion of the original rejections or
restated rejections in the Answer address the dispositive limitation in any
manner whatsoever in connection with independent claim 1, or independent
claim 10, which recites the dispositive limitation in commensurate, if not
identical, form.
Accordingly, we do not sustain the Examiner’s obviousness
Rejections R3 through R9 of claims 1, 3, and 7–14.
CONCLUSIONS
(1) The Examiner erred with respect to indefiniteness Rejection R1
of claims 1, 3, and 7–13 under 35 U.S.C. § 112, second paragraph, and we
do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
through R9 of claims 1, 3, and 7–14 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we do not sustain the rejections.

Takahashi in these rejections (Br. 62–64) by stating, “[t]hus, a remixing rate
that is less than or equal to 20% per the claimed invention is neither
disclosed nor taught nor inherent in any other prior art referenced in the
above rejections nor in Takahashi.” Br. 64.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
1, 3, 7–13 112, ¶ 2 Indefiniteness 1, 3, 7–13
1, 3, 7–14 103(a) Obviousness
Takamura, Rigney,
AAPA
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Takamura,
Yamaguchi, AAPA
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Evans, Rigney,
AAPA
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Evans, Yamaguchi,
AAPA
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Takamura, Rigney,
Takahashi
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Takamura,
Yamaguchi,
Takahashi
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Evans, Rigney,
Takahashi
1, 3, 7–14
1, 3, 7–14 103(a) Obviousness
Evans, Yamaguchi,
Takahashi
1, 3, 7–14
Overall
Outcome
1, 3, 7–14
REVERSED
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BUSCH, Administrative Patent Judge, dissenting.
I respectfully dissent from the Majority’s disposition of the case.
Specifically, I disagree with the Majority’s decision reversing the
Examiner’s rejection of claims 1, 3, and 7–14 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter Appellant regards as the invention. Accordingly,
because I would affirm at least one ground of rejection of every pending
claim, I would affirm the Examiner’s rejection of claims 1, 3, and 7–14.
As the Majority notes, the Examiner rejects claims 1, 3, and 7–14 as
indefinite. Final Act. 2–3. Independent claims 1 and 10 recite that “the
centrifuge is configured to reach a remixing rate that is less than or equal to
20%.” Br. 68–69. Claims 3, 7–9, and 11–14 depend from, and inherit the
limitations of, one of independent claims 1 and 10.
The Examiner explains that the limitations relating to the remixing
rate the centrifuge is configured to reach are indefinite because the recited
resulting remixing rates do not further limit or clearly define the structure
required to achieve those remixing rates beyond what is already explicitly
recited in independent claims 1 and 10. Final Act. 3 (“the functional
operation of centrifuging a particular substance such that a certain remixing
rate results is not a structure of the centrifuge and there is no way to
determine what structure is included and excluded by the functional ability
to operate the centrifuge as claimed”); Ans. 3. The Examiner explains that
“[t]he particular fluids and recited function do nothing to distinguish the
structure of the centrifuge other than it operate at high enough speeds to
create separation of the claimed substances.” Final Act. 3. The Examiner
also finds that, other than the already-recited use of particular types of
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compressors and rotational speeds, the Specification fails to identify
structure that would provide the claimed remixing rates, which leaves a
person of ordinary skill in the art without any guidance to determine the
structural requirements of the functionally recited limitations, rendering the
functional limitations indefinite. Ans. 3–4. The Examiner notes that “any
centrifuge capable of the claimed speed range is capable of providing the
claimed separation.” Ans. 4.
Although Appellant is correct that not every possible structure must
be spelled out, see Br. 19, 35 U.S.C. § 112, second paragraph, requires that
every claim limitation is definite—i.e., clearly points out the scope of the
claimed subject matter.
I find Appellant’s other arguments equally unpersuasive. Appellant’s
comparison to the claims at issue in In re Barr, 444 F.2d 588 (CCPA 1971)
are inapposite because the relevant functional limitation related to a property
of the claimed compound. Barr, 444. F.2d 488, 590–92.
Similarly, the fact that the claim recites a particular formula for
calculating the remix rate does not render the claims definite. Even though a
person of ordinary skill in the art could measure remix rates of solutions
placed through a centrifuge to determine whether the remix rate satisfies the
claimed conditions, that does not provide the person of ordinary skill in the
art with a clear and definite understanding of the structure necessary to
create that result. Appellant has not persuasively demonstrated that the exact
same centrifuge would always produce the same results given the claimed
conditions, regardless of the rotational speed (within the claimed range) at
which the centrifuge is operated, the amount of time for which the centrifuge
is operated, or any other variables that may affect the remix rate.
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The resulting remixing rate is, at best, a characteristic of the solution
produced by using the claimed centrifuge. In no way does the claimed
resulting remixing rate describe or define a characteristic, property, or
structure of the claimed centrifuge. Reviewing the Specification provides no
further guidance regarding how the claimed resulting remix rate defines or
depends on the centrifuge’s structure, other than already recited in the
claims.7 See Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002) (the patentability of an apparatus claim “depends
on the claimed structure, not on the use or purpose of that structure”).
In fact, the Specification implies that the only structure that is
important in generating the claimed resulting remix rate is that the
compressor is a rotation compressor. Spec. ¶¶ 2, 9, 12, 13 (“vibrations
significantly contribute to the high remixing rates”), 14–15 (explaining that
compressors having a rotating movement reduces problematic vibrations).
The Specification also compares resulting mixing rates generated using a
centrifuge having a rolling piston compressor with resulting mixing rates
generating using a conventional centrifuge having a reciprocating piston
compressor. Spec. ¶¶ 29–41. The Specification notes the components of the

7 Should this matter undergo further prosecution, I also note the Examiner
may wish to consider whether the limitation reciting that “the centrifuge
rotates at speeds between 16,000 RPM and 25,000 RPM” results in the claim
impermissibly mixing an apparatus and a method or if the limitation defines
the structure or characteristics of the claimed apparatus. Compare IPXL
Holdings, LLC v. Amazon.com, Inc, 430 F.3d 1377, 1384 (Fed. Cir. 2005)
(holding a claim term indefinite for covering both an apparatus and a method
of using the apparatus), with UltimatePointer, L.L.C. v. Nintendo Co., 816
F.3d 816, 827 (Fed. Cir. 2016) (treating a limitation that “reflects the
capability of the structure rather than the activities of the user” as a proper
limitation of a claimed apparatus).
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two centrifuges, other than the compressors, are the same and the samples
were generated using the same variables. Spec. ¶¶ 31–36. Accordingly, the
Specification indicates that the different compressor is the structural element
of the centrifuge that leads to the claimed resulting remix rates. See Spec.
¶ 41 (“It is apparent from the description provided supra that the laboratory
centrifuge 1 according to the invention provides much better de-mixing rates
for the centrifuged samples since providing at least one rotation compressor
6 according to the invention introduces much less vibration into the
laboratory centrifuge 1 so that much lower mixing rates are achieved.”).
For the above reasons, we are left to speculate what further
configurations beyond those structural limitations already recited in the
claims are necessary to result in “the centrifuge [being] configured to reach a
remixing rate that is less than or equal to 20%” (or 17% or 14%). I find the
Examiner properly addresses this lack of clarity regarding the scope of the
claims by rejecting the claims as indefinite. Therefore, I respectfully
disagree with the Majority Opinion that the Examiner’s rejection conflates
the requirements of indefiniteness with those of enablement and/or written
description. Accordingly, I would conclude that claims 1, 3, and 7–14 are
indefinite, and I would affirm the Examiner’s rejection of these claims under
35 U.S.C. § 112, second paragraph.
Because the remixing rate limitations are indefinite and do not clearly
define the metes and bounds of the claims, determining the necessary
structure required by these claims would require speculative assumptions.
Therefore, I would reverse all of the Examiner’s rejections because we
cannot apply the art without understanding the metes and bounds of the
claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (a prior art rejection
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cannot be sustained if a person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language).