Appeal No. 1996-2229
Application 08/196,748
appropriate Office action setting forth the basis for that
position. In so doing, the examiner should designate “as nearly
as practicable” the particular part or passage of each prior art
reference relied on.
37 CFR § 1.104(c)(2). Further, the examiner should provide a
substantive response to appellant's reliance on Nicholson as
evidence of non-obviousness. See the Appeal Brief, page 6.
Further, in reevaluating the patentability of claims 1 through 4
on prior art grounds, the examiner should consider the proper
interpretation of those claims as discussed in the first section
of this opinion.
We remand this application to the examiner to reevaluate the
patentability of claims 1 through 4 in light of the foregoing
discussion. On the surface, it would appear the Yoshimoto (RR)
constitutes the closest prior art in this case. This follows
from the examiner's argument that Yoshimoto (RR) describes a 91-
fold purification of LTC synthase (Examiner's Answer, page 7)
4
and appellant's similar description of that reference in the
Appeal Brief, page 5. Therefore, on return of this application,
we recommend that the examiner pay particular attention to
Yoshimoto (RR). The examiner should explain why the subject
matter sought to patented in claims 1 through 4, properly
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