Appeal No. 95-1364
Application No. 07/919,287
matter. The publications appear to be available through interlibrary loan. The state of the current record
precludes us from evaluating this rejection.
Accordingly, we vacate the rejection of claims 1-6, 8-9, 12-17 and 23-26 under 35 U.S.C. § 103
and remand the application for further proceedings including properly including a copy of the Leach et al.
reference and consideration of the full text of the abstracted articles.
New Ground of Rejection under 35 U.S.C. § 112, ¶ 2
Claims 31-33 are rejected under 35 U.S.C. § 112, ¶ 2, as indefinite. These claims are dependant
on claims 1, 14 and 27, respectively. As such they are subject to the mandatory claim construction of of
§ 112, ¶ 4. That paragraph provides in part:
A claim in dependent form shall be construed to incorporate by reference all
limitations of the claim to which it refers.
Thus the limitation of claims 1, 14 and 27 must be read into claims 31-33. Each of claims 1, 14 and 27
1 2
requires that “OX AND OX are simultaneously hydroxy.” Claims 31-33 each include the limitation
1 2 4 4
“wherein one of OX AND OX is hydroxy and the other is OR where R is saturated or unsaturated
hydrocarbon of less than four carbons.” Thus, claims 31-33 are internally inconsistent in simultaneously
1 2 1 2
requiring (1) that OX and OX both be hydroxy and (2) that only one of OX and OX be hydroxy and
the other be OR . The inconsistency renders the subject matter of the claims 31-33 indefinite.4
This decision contains a remand and a new ground of rejection pursuant to 37 CFR §
1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides
that, “A new ground of rejection shall not be considered final for purposes of judicial review.” In addition
37 CFR § 1.196(e) provides that a decision which includes or allows a remand is not final for purposes
of judicial review.
14
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007