Appeal No. 95-2244
Application 08/036,648
Finally, we observe the examiner's comment on page 4 of
her Answer wherein she states that she:
does not doubt that the composition comprises drug
and polymer, but remains of the opinion that the
dosage form is encompassed by drug and polymer, as
defined in independent claims, and said drug and
polymer being contained within a wall, compartment
etc as disclosed throughout the specification.
We consider this statement to constitute an expression by the
examiner of a failure by appellants to claim that which they
believe to be their invention under the second paragraph of 35
U.S.C. § 112 rather than an enablement question arising under
the first paragraph. Suffice it to say that, absent evidence
to the contrary, the subject matter set forth in the claims
must be presumed to be "that which the applicant regards as
his invention." In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). The examiner has not rejected the
claims under the second paragraph of 35 U.S.C. § 112 and, in
any event, neither has the examiner provided the necessary
"evidence to the contrary."
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