Appeal No. 97-2884
Application 07/824,855
anticipated by Cohen;
d) claims 58, 60 and 61 under 35 U.S.C. § 103 as being
unpatentable over Cohen or Malacheski in view of Gangemi; and
e) claims 58 and 59 under 35 U.S.C. § 103 as being
unpatentable over Negaty-Hindi in view of Cohen, Malacheski
and Gangemi.2
We shall not sustain any of these rejections.
The 35 U.S.C. § 112, first paragraph, rejection is based
on the examiner’s determination that the appellants’
specification does not provide an enabling disclosure of the
infusion apparatus embodiment depicted in Figures 8 through 10
(see the objection to the specification set forth in Paper No.
10; and pages 4 and 5 in the answer). The examiner, however,
has not advanced any cogent reasoning as to why the
appellants’ disclosure of this relatively simple and
straightforward embodiment would not have enabled a person of
ordinary skill in the art to make and use the same without
2The examiner’s answer (Paper No. 28) improperly refers
to a plurality of prior Office actions to explain the appealed
rejections. As stated in Section 1208 of the Manual of Patent
Examining Procedure, “[a]n examiner’s answer should not refer,
either directly or indirectly, to more than one prior Office
action for the statement of the grounds of rejection.”
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