Appeal No. 95-2909
Application 08/048,270
Second Supplemental Examiner’s Answer (Paper No. 17), in which
she reiterated that claim 6 was indefinite, without mentioning
the amendment; apparently, from her comments, the amendment was
overlooked.
Where, as here, an examiner’s answer includes a new ground
of rejection, the appellant may file a reply “accompanied by any
amendment or material appropriate to the new ground.” 37 CFR
§ 1.193(b). Since appellant’s Amendment C appears to be limited
to the new ground, it would be entitled to entry. See MPEP
§ 1208.03, citing Ex parte Abseck, 133 USPQ 411 (Sup. Exr. 1960).
Accordingly, reading claim 1 as if Amendment C had been entered,
we consider it to be evident that it overcomes the rejection of
claim 6 under the second paragraph of 35 U.S.C. § 112.
We will therefore not sustain rejection (4).
Conclusion
The examiner’s decision to reject claims 1 and 5 to 7 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
IRWIN CHARLES COHEN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
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