Appeal No. 1997-2336
Application No. 08/256,065
individually found in the examples at pages 10-13. In each of these examples, when
acetylsalicylic acid is present, the exemplified composition additionally includes acetic
anhydride which the specification describes as being the substance useful to preclude or
at least reduce the hydrolysis of acetyl salicylic acid in the transdermal system. Thus, on
these facts, the designation of the substances found in the Markush group of claim 27 as
substances which preclude or at least greatly reduce hydrolysis lacks written support or
antecedent basis in the application as filed.
Conclusion
The examiner's rejection of claims 27-35 under 35 U.S.C. § 112, first paragraph, is
affirmed. The rejection of claim 36 under 35 U.S.C. § 112, first paragraph, is vacated. A
new ground of rejection under 37 CFR § 1.196(b) is entered as to claims 27-29 under 35
U.S.C. § 112, first paragraph.
Time Period for Response
In addition to affirming the examiner’s rejection of one or more claims, this decision
contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz.
Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides, “A new ground of rejection shall not be considered final for purposes
of judicial review.”
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