Appeal No. 2003-0847 Page 3
Application No. 08/744,685
obvious by the combination of Fell A or Fell B as combined with Yamawaki-
Kataoka. After careful review of the record and consideration of the issues
before us, we reverse all of the rejections of record. Note that in deciding this
appeal, we have also considered the issues in related Appeal No. 2003-1594,
Application No. 08/970,266.
DISCUSSION
1. Rejection under 35 U.S.C. § 112, first paragraph (New Matter)
Claims 19, 23 and 27 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter that was not described in the
specification in such a way as to reasonably convey to one skilled in the relevant
art that the inventors, at the time of filing, had possession of the claimed
invention.
As an initial matter, we note that the Examiner’s Answer references two
prior office actions in which the rejection is set forth, Paper Nos. 17 and 24. An
Examiner’s Answer should not, however, reference more than a single prior
office action. See MPEP 1208 (“An examiner’s answer should not refer, either
directly or indirectly, to more than one prior Office action.”). Moreover, where
there is confusion of what constitutes the rejection, as there is in this case, the
examiner’s answer should set forth the rejection in its entirety in the answer
rather than referencing the prior actions.
To the best of our understanding, the examiner is objecting to the
reference to the selectable markers xanthene-guanine
phosphoribosyltransferase (gpt) and dihydrofolate reductase (dhfr). The
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