Appeal No. 96-1447
Application 08/028,764
respect to the latter statutory provision, we observe that while Adler would have reasonably
suggested to one of ordinary skill in this art that the addition of membrane fragments to “many
industrial fermentation processes” (col. 6, lines 1-3) which can contain “ethanol” (col. 4, line 67),
such addition would have been directly into the medium (e.g., col. 4, lines 62-64). The examiner
has failed to provide evidence and/or scientific reasoning in the record explaining why one of
ordinary skill in this art would have modified this teaching of Adler by incorporating the
membrane fragments into a solution contacting surface of a fermentation vessel.5 Thus, it is
manifest that the only direction to appellants’ claimed invention as a whole on the record before
us is supplied by appellants’ own specification. Fine, supra; Dow Chem., supra.
fragments into the solution contact surface. In re Morris, 127 F.3d 1048, 1054-56, 44 USPQ2d
1023, 1027-29 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989). Our reference to the specification is with respect to the substituted specification, filed
January 19, 1994 (Paper No. 14), entered by the examiner as set forth in the final rejection of
May 11, 1994 (Paper No. 15). See also page 3 of the answer. The objection with respect to the
substitute specification (answer, page 3) is petitionable and not subject to review on appeal.
Manual of Patent Examining Procedure § 706.01 (7th. ed., July 1998; 700-9).
5 In this respect, the disclosure at ,e.g., col. 12, lines 29-31, of United States Patent 5,240,853, to
Copeland et al., maturing from an application filed March 7, 1989, should be considered in any
further prosecution of the appealed claims before the examiner. The ‘853 patent was made of
record in the advisory action of December 19, 1994. We observe that United States Patent
5,482,860, not of record, which matured from an application that is a division of the application
from which the ‘853 patent matured, indeed claims an apparatus in which “membrane fragments”
are “immobilized in the reactor chamber” (e.g., claim 1).
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