Ex Parte CUFF et al - Page 5



              Appeal No. 2001-2157                                                               Page 5                
              Application No. 08/918,741                                                                               
              Frusemide," J. Pharm. Pharmacol., Vol. 44, pp. 627-633 (1991)                                            
              Takeuchi et al. (Takeuchi), "Progress of Powder Technology.  Particle Design and                         
              Manufacturing," Chem. Eng., Vol. 37, pp. 496-501 (1992)                                                  
              Uekama et al. (Uekama), "Inhibitory Effect of 2-Hydroxypropyl-$-cyclodextrin on                          
              Crystal- growth of Nifedipine During Storage: Superior Dissolutin and Oral                               
              Bioavailability Compared with Polyvinylpyrrolidone K-30," J. Pharm. Pharmacol., Vol.                     
              44, pp. 73-78 (1991)                                                                                     
              Yano et al. (Yano), "Crystal Forms, Improvements of Dissolution and Absorption of                        
              poorly Water Soluble (R)-1[2,3-Dihydro-1-(2'-Methylphenacyl)-2-Oxo-5-Phenyl-1H-1,4-                      
              Benzodiazepin-3-YL]-3-(3-Methylphenyl)Urea (YM022)," Yakugaku Zasshi, Vol. 116,                          
              no. 8, pp. 639-646 (1996)                                                                                
              Yasuhiko et al. (Yasuhiko), "Characterization of amorphous ursodeocycholic Acid                          
              Prepared by Spray-Drying Technique," JICST 03282368 (1992)                                               

                                                   The Rejections                                                      
                     In section (10) of the Examiner's Answer (Paper No. 13), the examiner does not                    
              set forth each prior art rejection of record.  Rather, the examiner refers to multiple                   
              rejections in previous Office actions, Paper Nos. 4 and 8; characterizes those rejections                
              as though they constituted a single "rejection;" and summarizes that "rejection" in two                  
              paragraphs.  This is manifestly improper.  See Manual of Patent Examining Procedure                      
              (MPEP) § 1208 (7th ed., July 1998) ("Only those statements of grounds of rejection                       
              appearing in a single prior action may be incorporated by reference.  An examiner's                      
              answer should not refer, either directly or indirectly, to more than one prior Office                    
              action.").                                                                                               




                     As best we can judge, the appealed claims stand rejected as follows:                              






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