Appeal No. 1997-1817
Application No. 08/139,693
Accordingly, the rejection of claims 1-11 and 16 rejected under 35 U.S.C. § 103
as being unpatentable over Forsdyke, Matsuyama and appellants' "admission" is
reversed.
3. Vacatur of the rejection of claims 12-15 under § 103 over Forsdyke, Matsuyama,
appellants' "admission" and Microbiology
Our consideration of this rejection leads us to conclude that it is not in condition
for a decision on appeal. According to the answer (pp. 2-3, § (7) Prior Art of Record),
the examiner is relying on pp. 468 and 1212 of Microbiology. However, the examiner
refers to pages 648 and 1212 of Microbiology in his rejection of claims 12-15 (answer,
p. 5). The record copy of Microbiology only contains pages 468 and 1212. Thus, it is
unclear what portion of Microbiology the examiner is relying on for what disclosure. It is
impossible to tell whether or not the disclosure in Microbiology remedies the deficiency
in the combination of Forsdyke and Matsuyama, with or without appellants' "admission."
Therefore, we vacate the rejection of claims 12-15 under § 103 over Forsdyke,
Matsuyama, appellants' "admission" and Microbiology; and, remand the application to
the examiner to clarify the basis of rejection and to take appropriate action.
OTHER ISSUES
Upon return of this application to the jurisdiction of the examiner, the examiner
should take a step back and re-evaluate the disclosure of Forsdyke in combination with
the disclosure in Kroyer (US Patent 4,908,014, issued March 13, 1990), discussed in
appellants' specification as reference (*m) and submitted in the Information Disclosure
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