Appeal No. 93-4191
Application 07/831,627
the examiner’s rejection is less than a model of clarity.
Although a plethora of references have been cited by the
examiner as either anticipating or rendering obvious the
claimed method, no where in the Answer does the examiner
identify the teachings within the references on which his
findings or conclusion are based. Moreover, we find the
examiner’s reading of the treatment of the specified patient
group out of the claims to constitute legal error. 2
Accordingly, the rejection is reversed.
Other Issues
Upon return of this application to the corps, the
examiner should consider the patients described in applied
prior art and determine whether they would include patients
2We refer to the examiner’s statement on p. 7, para. 4 of
the Answer that:
[a] preamble is generally not accorded any
patentable weight, by the U.S.P.T.O., when it merely
recites a purpose for carrying out the process.
[Citations omitted.] A preamble is of no patentable
import when the claimed process relates to a method
of using rather than a method of making. [Citations
omitted.]
4
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