Appeal No. 99-0622 Page 2
Application No. 08/637,717
withdrew the rejections of claims 31 through 35 and 42 through
55 under 35 U.S.C. § 112, second paragraph , claims 48 and 513
under 35 U.S.C. § 102(b) and claims 32 through 35, 38, 49, 53
and 55 under 35 U.S.C. § 103 in the answer (see top of page
4). Accordingly, the claims involved in this appeal are
claims 25 through 31, 36, 37, 39, 41 through 47, 50, 52 and
54. We note that the examiner's addition of a new ground of
rejection of claim 44 under 35 U.S.C. § 102 as being
anticipated by Leach in the answer (page 3) was not in
compliance with 37 CFR § 1.193(a)(2)(added effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 121
(Oct. 21, 1997)). Our treatment of the rejection infra,
however, ensures that the appellant suffers no prejudice from
the inclusion of this new ground of rejection.
We REVERSE and enter a new ground of rejection pursuant
to the provisions of 37 CFR § 1.196(b).
3We interpret the examiner's reference to the 35 U.S.C. § 112, second
paragraph, rejection on page 4 of the answer merely as notice that, in view of
the latitude the examiner has afforded the appellant in defining
"intermediate" in claim 31 by withdrawing the 35 U.S.C. § 112 rejection, the
term "intermediate" is read by the examiner with similar breadth in assessing
the claims in view of the prior art. It is not interpreted as a statement of
intent to maintain the 35 U.S.C. § 112 rejection.
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