Ex parte MATHIOWITZ - Page 4




          Appeal No. 95-2876                                                          
          Application 07/906,403                                                      


               As a preliminary matter, we note that appellants question              
          the propriety of the examiner's refusal to enter an amendment               
          after final rejection.  We need to emphasize that appellants'               
          remedy is through a petition to the Commissioner, not through               
          an appeal to the Board.  In re Hengehold, 440 F.2d 1395, 1403,              
          169 USPQ 473, 479 (CCPA 1971).                                              


                              2.  112, First Paragraph                               


               The examiner has rejected claims 20 through 24 under 35                
          U.S.C.  112, first paragraph.  According to the examiner at                
          page 4 of the Answer, the specification lacks the best mode of              
          forming a particular microspherical product.  The examiner,                 
          however, has not established that, at the time the application              
          was filed, inventors knew of a mode of forming this                         
          microspherical product that they considered to be better than               
          any other.  Chemcast Corp. v. Arco Industries, 913 F.2d 923,                
          926, 16 USPQ2d 1033, 1035 (Fed. Cir. 1990).  Since the                      
          examiner has not proffered any evidence of concealment                      




                                          4                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007