Appeal No. 1995-2698
Application 07/660,807
Answer. The first rejection (Examiner’s Answer, pages 4-7) appeared in the final
rejection. The second rejection (Examiner’s Answer, pages 7-10) is a new
ground of rejection made in the Examiner’s Answer. The heading for the first
rejection reads as follows:
Claims 1-12, 18-20, 26 and 29-36 are rejected under 35 U.S.C. 103 as
being unpatentable over Miana et al, Fournet et al (R and S newly cited) and
Ferrer Int SA in view of Mitscher et al, Neal et al (newly cited) and Applicants
acknowledgement all of record or newly cited.
The heading for the new ground of rejection reads as follows:
Claims 1-12, 18-20, 26 and 29-36 are rejected under 35 U.S.C. 103 as
being unpatentable over Fournet et al. (R and S newly cited, references
underlying the original Chemical Abstracts) in view of Neal et al, Riou et al
(newly cited), Applicants acknowledgement and Mitscher et al, all of
record or newly cited.
The references underlying Fournet et al (R and S) are provided to clarify
the rejection. Additionally, several references causing confusion as to the
Examiners position have been replaced with Riou et al. Rational [sic] used
in the rejection under 35 USC 103 is unchanged, but reformulated here to
simplify the issues and expedite prosecution.
At the time of the final rejection, the Fournet references relied upon by the
examiner appear to be citations from Chemical Abstracts. Attached to a
“Supplemental Brief on Appeal” (Paper No. 20, September 27, 1993), are copies
of the translated full text Fournet articles. It is not clear what the examiner
means by the phrase “(R and S newly cited)” in describing the Fournet
references in the first ground of rejection since it appears that the examiner
relies upon the full text translations in the new ground of rejection in the
Examiner’s Answer. Thus, it is not clear what Fournet references are “newly
cited” in regard to the first ground of rejection. The same confusion exists to the
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