Appeal No. 2002-1837
Application 09/315,411
Attention is directed to the appellants’ main and reply
briefs (Paper Nos. 18 and 20) and to the examiner’s final
rejection and answer (Paper Nos. 12 and 19) for respective
positions of the appellants and the examiner regarding the merits
of this rejection.1
DISCUSSION
I. Preliminary matter
The appellants in their main brief (see pages 1, 2, 7 and 8)
raise as an issue in the appeal the examiner’s withdrawal of
claims 7, 12 and 21 from consideration as not being readable on
the elected species of the invention, and then in their reply
brief (see page 1) state that this issue has been rendered moot
by the filing of divisional applications. Hence, we shall not
further address the matter except to say that since the
examiner’s action in this regard was not directly connected with
the merits of issues involving a rejection of claims, it would
have been reviewable by petition to the Director rather than
appeal to this Board. See In re Hengehold, 440 F.2d 1395, 1403-
04, 169 USPQ 473, 479 (CCPA 1971); and MPEP § 821.
1 The restatement of the rejection in the examiner’s answer
mistakenly implies written description, rather than enablement,
issues. The substantive discussions of the rejection in the
final rejection and answer make clear that the rejection is based
on enablement concerns.
3
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