Appeal 95-4477
Application 08/006,350
§ 1.196(b), on the ground that those claims fail to comply
with the description requirement of the first paragraph of
35 U.S.C. § 112 with respect to the A:B ratio recited in claim
1.
We recognize that there is a rejection based on
obviousness presented by the appeal. However, we are unable
to determine the weight, if any, which applicant and the
examiner gave to the limitation "about >10:1 to 15:1." The
limitation is not mentioned in the Examiner's Answer and/or
the argument portion of applicant's brief on appeal. Hence,
we will vacate the examiner's § 103 rejection, without
prejudice to the examiner making another rejection based,
inter alia, on Schaefer, in the event applicant files an
amendment in response to our new ground of rejection.14
We have noted several deficiencies in the brief on appeal (Paper 15) and the14
Examiner's Answer (Paper 16). It was not sufficient when the appeal brief was filed
(37 CFR § 1.192(c)(6)(iv) (1994)), and it is not sufficient now (37 CFR
§ 1.192(c)(8)(iv) (1998)), to simply point out that a prior art reference does not
describe all limitations. An applicant is further obligated to point out why the
rejection is wrong and why the invention is patentable notwithstanding the failure of a
reference to describe a particular limitation. Claims stand or fall together unless
separate argument is presented indicating why a claim is considered to be patentable.
Hence, in this case before us, had we reached the merits of the prior art rejection, all
claims would have stood or fallen with claim 1. The examiner failed to appreciate the
requirements of Rule 192. On his view of the rules, the examiner nevertheless failed to
address various limitations, e.g., the claims calling for organopolysiloxanes C, D and
E.
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