Appeal No. 96-0501
Application 08/101,499
amending claim 34 by changing “molding” to --compressing-- and
“molded” to --compressed--.
The examiner then issued an advisory action (Paper No. 18)
stating that the reply brief “has been entered and considered,”
but not mentioning the amendment. However, in the margin of the
amendment is the handwritten notation “Do Not Enter/MDP
10/19/95.”
Under the provisions of 37 CFR § 1.193(b), the appellant’s
reply to a new ground of rejection “may be accompanied by any
amendment or material appropriate to the new ground,” and an
amendment limited to the new ground of rejection is entitled to
entry. MPEP § 1208.03. Appellant was therefore entitled to have
the amendment of claim 34 entered. Also, since appellant
discussed the effect of the amendment in the reply brief (e.g.,
in part 5 on page 9), it was inconsistent for the examiner to
state in Paper No. 18 that the reply brief had been considered
while at the same time denying entry of the amendment (but not
communicating the denial of entry to the appellant). Under the
circumstances, we will treat the case as if the “Amendment Under
Rule 193(b)” had been entered, and proceed on that basis.
In both rejection (3) and rejection (4), the examiner relies
on Gianakos for its disclosure of molding an envelope of filler
material prior to packaging. However, as appellant points out,
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