Appeal No. 96-1948
Application 07/995,952
differences in the claim over the applied reference(s), (3) the proposed
modification of the applied reference(s) necessary to arrive at the claimed
subject matter, and (4) an explanation why such proposed modification
would have been obvious to one of ordinary skill in the art at the time the
invention was made.
Upon return of the application and after clarification of which Dunn reference is relied upon,
we recommend that the examiner review the statement of the rejection and redraft it using
the model set forth in MPEP § 706.02(j). In so doing, the examiner should consider each
claim on appeal individually. For example, claim 1 on appeal is directed to a polymer
blend which does not include a pharmaceutically active agent. Claim 10 is directed to a
process for preparing blends of miscible polymers and also does not involve the presence
or use of a pharmaceutically active agent. Since the statement of the rejection does not
separately address claim 10 on appeal, it is not apparent how the references, either
individually or in combination, teach or suggest the steps required by claim 10 on appeal.
3. Scope of Search
As set forth above, some of the claims on appeal do not require the presence or
use of a pharmaceutically active agent. However, it appears that the examiner has limited
his search of the prior art on the basis that all of the claims on appeal require a
pharmaceutically active agent. The “SEARCHED” portion of the administrative file
wrapper does not indicate that the examiner has searched classes such as class 525
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007