Appeal No. 93-3228
Application 07/796,023
for impurities ordinarily associated therewith. The 5
insertion of “consisting of” into the claims on appeal would
obviate the new ground of rejection entered above since the
scope of the amended claims would be consistent with the
disclosure and teachings of the specification. The examiner
should re-evaluate the patentability of the subject matter in
any amended claims in view of the above remarks and the prior
art.
The examiner and appellant should reconcile the scope of
the language of claims 7 and 8, if amended pursuant to our
statement under 37 CFR § 1.196(c), with the language of
dependent claims 11 and 29-31. Specifically, the kit of
claims 11 and 31 and the bioerodible preparation of claims 29
and 30 all recite the term ?comprises? but these claims
ultimately depend on claims 7 and 8. The meaning or scope of
the term ?comprises? is well settled. The term ?comprises?
leaves the claim open for the inclusion of unspecified
5 See Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948), and cases cited in
footnote 3 supra.
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