Appeal No. 94-2504
Application 07/963,676
[I]t is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it
doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is
inconsistent with the contested statement. Otherwise,
there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively
accurate disclosure.
Here, appellants’ claims stand finally rejected because
“‘[a] cell membrane permeant calcium buffer’ is broader than
the specific supporting disclosure,” with no explanation,
evidence or reasoning in support of the rejection. We are
obliged to reverse this rejection. Whether or not the claims
on appeal are drawn to an invention “broader than the elected
invention” is, of course,
not a matter within the scope of our jurisdiction under 35
U.S.C. § 134.
We are mindful that the examiner ultimately explained the
basis for the rejection in the Examiner’s Answer by setting
forth a new rationale. However, the examiner (1) did not
substantively respond to the arguments contained in the Reply
Brief and (2) refused to consider appellants’ amendment at
their first opportunity to amend the claims in response to the
new rationale. Thus, the posture of this case is that
appellants were first notified of substantive reasons why
- 9 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007