Appeal No. 1999-0046
Application No. 08/442,103
The following rejections under 35 U.S.C. § 103 are before
us for review:2
(a) claims 34-43, 48, 49, 51, 52, 54 and 64-67,
unpatentable over Meijburg in view of Austrian Patent 211,796
(hereinafter, AP);
2The final rejection (pages 9-10) also included a
rejection of claims 55 and 57 under 35 U.S.C. § 112, second
paragraph. On pages 1-2 of the main brief, appellants refer
to an amendment being filed concurrently with the main brief
to overcome this rejection. In addition, the appendix to the
main brief includes copies of claims 55, 57 and 61 as they
would appear had the amendment filed subsequent to the final
rejection on December 11, 1997 (Paper No. 10) been entered.
We have searched the record in vain for a separate amendment
filed concurrently with the main brief. Notwithstanding this
circumstance, the examiner’s answer states that (1) “[t]he
appellant’s [sic] statement of the status of the amendments
after final rejection contained in the brief is correct”
(answer, page 2), (2) “[t]he copy of the appealed claims
contained in the Appendix to the brief is correct” (answer,
page 2), and (3) “[e]ntry of the amendments to claims 55 and
57 have been entered to overcome the rejection under 35 U.S.C.
§ 112" (answer, page 10). Since the rejection of claims 55
and 57 under 35 U.S.C. § 112, second paragraph, contained in
the final rejection has not been repeated in the answer, it is
presumed to have been withdrawn. Ex parte Emm, 118 USPQ 180
(Bd. App. 1957). Furthermore, in light of the circumstances
recounted above, the versions of claims 55, 57 and 61
contained in the appendix to appellants’ main brief are
presumed to be the correct version thereof. However, upon
return of this application to the examiner’s jurisdiction,
steps should be taken to confirm the changes to claims 55, 57
and 61 effected by appellants’ main brief by placing in the
record a separate paper formalizing these changes.
3
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