Appeal NO. 1996-3683
Application 08/207,393
THE REJECTIONS
Claims 19 through 21 and 23 through 40 stand rejected
under 35 U.S.C. § 112, first paragraph, on the grounds that
the subject matter claimed therein is not enabled by
appellants' specification. We reverse.
OPINION
After a thorough review of the claims before us
considered in light of appellants' disclosure, the prior art
of record in the prosecution history and the respective
positions of both the appellants and the examiner, we conclude
that considerable speculation as to the meaning of the claim
terminology "free carboxyl groups" and the scope of the claims
was engaged in by both the appellants and the examiner.
Accordingly, we take the unusual step of summarily reversing
the examiner's rejection and entering the following new ground
of rejection, because the rejection was improperly founded on
speculation and assumptions by both the appellants and the
examiner. Compare In re Steele, 305 F.2d 859, 134 USPQ 292
(CCPA 1962).
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 1.196(b), we
enter the following new ground of rejection.
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