Appeal 97-2360
Application 08/234,495
applicants' admissions (apparently based on applicants having
presented Jepson claims at one time during the prosecution),2
(2) Simmonds, (3) Thompson and (4) applicants' own disclosure
(presumably
page 1, line 10 through page 2, line 2 of the specification),
possibly further in view of (5) Begley, is reversed.3
FURTHER ORDERED that the examiner's rejection of
claims 21-29 as being unpatentable under 35 U.S.C. § 103 over
(1) Friswell, (2) Simmonds, (3) Thompson and (4) applicants'
own disclosure (presumably page 1, line 10 through page 2,
line 2 of the specification), possibly further in view of (5)
Begley, is reversed.
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1. The examiner has clearly erred in finding that Simmonds
describes the use of perfluorocycloalkanes.
See Ex parte Jepson, 1917 Dec. Comm'r Pat. 62 (Comm'r Pat. 1917) (original
opinion discussing Jepson format for claims).
Begley does not appear to be included in the statements of rejection. Where a
reference is relied on to support a rejection, whether or not in a "minor capacity,"
there would appear to be no excuse for not positively including the reference in the
statement of rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970).
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