Appeal No. 1996-2123
Application No. 08/069,458
(claims 1-48) and add new claims.@ The examiner states in the March 25, 1992 Office Action (Paper No.
6), at page 2, A[t]he receipt of the Preliminary Amendment on April 10, 1991, has been acknowledged and
it has been entered. . . . In addition with respect to the claims, only claims 1-45 have been canceled and
entered as such, and claims 49-55 have been added.@ From this point forward there is no further
discussion on the record with regards to the existence of claims 46-48, or how claims 49-55 were entered
without being renumbered according to 37 C.F.R. ' 1.121. In addition, upon examination of the claims as
they appear at pages 66-71 of the specification, claims 1-45 were never physically canceled from the
application.
Adding to the confusion, the examiner indicates that claims 48-55 are on appeal. See, File
Wrapper=s index of claims. Claim 48 does not exist in this record. In addition, page 1 of appellants= Brief
indicates that A[c]laims 49-55 have been rejected. All rejections of all claims are being appealed.@ The
Examiner=s Answer confirms A[t]he statement of the status of claims contained in the brief is correct.@
Upon return of the application, the examiner should take a step back to evaluate the status of the
claims and then take the necessary corrective action. The examiner should notify appellants of the correct
status of the claims.
Deposit of Biological Materials:
Claim 55 references the following Acetobacter strains ATCC Nos. 53264, 53263 and 53524.
There are two possible interpretations of this claim: (1) that the mutant strain is ATCC Nos. 53264, 53263
or 53524; or (2) according to appellants that the mutant strain is a mutant of ATCC Nos. 53264, 53263 or
53524. However, either interpretation, appears to make access of this material, at this location (the
ATCC), necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. '
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