Appeal No. 96-1055
Application 07/727,331
For the above reasons, we conclude that the examiner has
not carried his burden of establishing a prima facie case of
non-enablement.
OTHER MATTERS
The application includes claim 15 which was copied after
final rejection from a patent for purposes of interference
(amendment filed February 26, 1993, paper no. 42). The
examiner states in the answer (first page) that the amendment
in which claim 15 was added was not entered. However, in an
advisory action (mailed May 11, 1994; paper no. 44), the
examiner indicated that the amendment has been entered, and
such entry is
shown in the file. In the advisory action, the examiner
rejected claim 15 under 35 U.S.C. § 112, first paragraph, on
the ground that the specification as filed lacked adequate
written descriptive support for the claimed invention. The
rejection of this claim is not included in appellants’
statement of the issues (brief, page 3) or in the examiner’s
statement of the rejection in the answer (second page) and,
therefore, clearly is not before us. We remand the case to
-5-5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007