Appeal No. 97-1871
Application 08/325,847
comply with 35 U.S.C. § 112, first paragraph.
(II.) Unpatentable under 35 U.S.C. § 103 over the following combinations of references:
(a) Claims 1 to 3, 8, 9, 20 to 22, 31 and 32, Baylin in view of Bishop and Smith;
(b) Claims 10 and 11, Baylin in view of Bishop, Smith and Kittredge;
(c) Claim 12, Baylin in view of Bishop, Smith and Gleszer;
(d) Claims 16 and 17, Baylin in view of Bishop, Smith and Schulte;
(e) Claim 18, Baylin in view of Bishop, Smith and Gillette;
(f) Claims 4 to 7, 13 to 15, 23 to 25 and 27 to 30, Baylin in view of Bishop, Smith and Balz;
(g) Claim 26, Baylin in view of Bishop, Balz and Gleszer.
(III.) Claims 1 to 18 and 20 to 32, unpatentable over claims 1 to 15 of Samsel on the ground of
obviousness-type double patenting. 3
Rejection (I)
On page 3 of the answer, the examiner states that the basis of this rejection is that "the
disclosure is enabling only for claims limited to those not claiming the ratio range which is treated as new
matter as noted below. See M.P.E.P. §§ 706.03(n) and 706.03(z)."4
3A rejection of claims 1 to 18 and 20 to 32 as unpatentable over Samsel in view of Smith
under 35 U.S.C. § 103 was not repeated in the answer and therefore is presumed to have been
withdrawn. Ex parte Emm, 118 USPQ 180 (Bd. Apps. 1957).
4These Sections are not in the current (July 1998) edition of the MPEP, but are quoted in part
(continued...)
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