Appeal No. 2001-2138
Application No. 08/403,276
reference compounds, we agree that a prima facie case of obviousness has not been
established, and that the rejection must be reversed for this reason as well.
Further considerations
In the event of further prosecution, the examiner and Appellants should consider the
following issues:
Information disclosure statement
The information disclosure statement filed April 3, 1995, in Paper No. 3, has not
been initialed by the examiner, although the examiner checked a box on the first action,
Paper No. 6, indicating that the Notice of Art Cited by Applicant, form PTO-1449, was
attached to the action. The examiner should take appropriate action.
Potential new matter issues:
The examiner and Appellants should determine whether new matter has been
entered into the specification in violation of 35 U.S.C. § 132. Appellants submitted
amendments to the specification (Paper No. 10, at page 1), alleging that certain material
was omitted due to an error of translation from their French priority document. (Id., at
page 3.) However, the foreign priority document does not appear to be incorporated by
reference into Appellants’ specification. Under 35 U.S.C. § 119, the benefit of priority is
granted only to the extent that “the same application would have if filed in this country on the
date on which the application for patent for the same invention was first filed in such foreign
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