Appeal No. 95-1390
Application 07/752,639
OTHER ISSUES
We note that the examiner attempts to explain why the subject matter of claim 6
would have been obvious to one of ordinary skill in the art on pages 11-12 of the
examiner's answer. However, these statements are made in response to arguments by
appellants and do not form part of the examiner's statement of the rejection. When
appellants attempted to respond to this newly stated position in the Reply Brief (Paper No.
18, June 17, 1994), the examiner refused to enter that paper. See the communication
issued by the examiner on July 20, 1994 (Paper No. 19).
Upon return of the application, we urge the examiner to take a step back and
reassess the patentability of the claims pending in this application. It seems unlikely that
twelve documents are needed to establish the obviousness of any single claim on appeal.
This points to the fact that the examiner needs to consider the patentability of the claims
pending in this application on an individual basis, not as a group which has occurred
during the examination of this application. It may be that the examiner has substantive
reasons why the four polypeptides set forth in claim 6 which have been examined on the
merits are unpatentable under 35 U.S.C. § 103. If so, those reasons have not been set
forth in this record in a cogent and proper manner.
If as a result of the examiner's review of the record it is determined that the subject
matter of any claim pending would have been obvious to one of ordinary skill in the art
under 35 U.S.C. § 103, we urge the examiner to formulate such a rejection using the model
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