Appeal No. 93-3228
Application 07/796,023
rejection pursuant to 37 CFR § 1.196(b) of claims 7-14, 21-25
and 28-31 under 35 U.S.C. § 112, second paragraph.
B. Statement Under 37 CFR § 1.196(c)
All of the prior art applied by the examiner in rejecting
the claims on appeal contains components other than a
bioactive macromolecule and a lipid powder (see the analysis
of the references on pages 3-6 of the answer). Because the
subject matter defined by the claims is not clear, it is not
possible to assess whether this subject matter would have been
anticipated under § 102 or unpatentable under § 103. See In
re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA
1962). Accordingly, we have vacated all four prior art
rejections.
The claims on appeal, if amended to read “consisting of”
instead of the presently claimed phrase “consisting
essentially of”, would avoid the foregoing new ground of
rejection under 35 U.S.C. § 112, second paragraph. The term
“consisting of” has the accepted meaning of closing the claim
to the inclusion of materials other than those recited except
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