Appeal No. 1997-2795
Application No. 08/438,933
ISSUES3
Claims 14 and 16 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite.
Claims 12 and 17 stand rejected under 35 U.S.C. § 102 as anticipated by or, in the alternative, under
35 U.S.C. § 103 as being unpatentable over any of Naggi ‘063, Naggi ‘881 or Petitou. Claims 13-16
stand rejected under 35 U.S.C. § 103 as being unpatentable over either Fransson (M) or Casu. We
REVERSE.
In reaching our decision in this appeal we have given careful consideration to the appellants’
specification and claims and to the respective positions articulated by the appellants and the examiner.
We make reference to the examiner’s answer (Paper No. 9, mailed December 13, 1996) for the
examiner’s reasoning in support of the rejections and to the appellants’ brief (Paper No. 8, filed
October 7, 1996) for the appellants’ arguments thereagainst.
3According to the Advisory Action mailed August 29, 1996 (Paper No. 6), cancellation of claims 8-11 in the
amendment filed August 20, 1996 (Paper No. 4) overcame the final rejection these claims under 35 U.S.C. § 112,
second paragraph, as indefinite for lack of proper antecedent basis and under 35 U.S.C. § 103 as being unpatentable
over Naggi ‘063, Naggi ‘881, Petitou, Conti (U.S. Patent No. 5,164,378, issued Nov. 17, 1992 and filed Nov. 26, 1990) or
Herr (U.S. Patent No. 4,966,894 issued Oct. 30, 1990).
According to the examiner’s answer, “[a]ll rejections based on HERR et al. (C), CONTI et al.(E),
FRANSSON et al. (L and N) are hereby withdrawn, and are therefore not at issue” (Paper No. 9, page 2). Thus, the
final rejection of (i) claims 12 and 17 under 35 U.S.C. § 102 as anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as being unpatentable over Conti or Herr and (ii) of claims 13-16 under 35 U.S.C. § 103 as being unpatentable
over Fransson (K) (i.e., 62 Carbohydrate Research 235-244 (1978), Fransson et al. (L) (i.e., 97 FEBS Letters 1,
119-123 (1979), or Fransson et al. (N) (i.e., 106 European Journal of Biochemistry 59-59 (1980)) have been withdrawn.
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