Appeal No. 1999-0623
Application No. 08/316,802
Appellant states (Brief2, page 2) that “[c]laims 3 and 27 … were canceled
and rewritten3 as independent claims 41 and 42, which have been indicated in the
Advisory Action4 of May 11, 1998, to be [a]llowed.” The May 11, 1998 Advisory
Action states that “[u]pon the filing of an appeal, the proposed amendment will be
entered.” However, on the first page of appellant’s response under 37 CFR §
1.1165, the examiner wrote the phrase “DO NOT ENTER” above the date and his
initials. As a result, the administrative file, does not reflect the entry of appellant’s
amendment, contrary to the direction provided in the May 11, 1998 Advisory Action.
No part of the Answer6, including the “Status of Claims” section address claims 3,
and 27. Therefore these claims are pending, free from rejection and are not before
us on appeal.
The examiner does not include claims 41 and 42 in any statement of a
rejection. Instead, the examiner states (Answer, page 4) that “contrary to the
advisory, paper #48, … claims 41 and 42 may still fail the requirements of 35
U.S.C. [§] 112 because the polymer may comprise nonapeptides for which a
sequence has not been delimited.” We do not consider the examiner’s comments a
statement of a rejection regarding claims 41 and 42. Furthermore, as discussed,
supra, claims 41 and 42 were not entered into this record. Therefore, claims 41 and
42 are not properly before us for review.
Claims 26 and 28 are illustrative of the subject matter on appeal and are
reproduced below:
2 Paper No. 50, received June 12, 1998.
3 In Paper No. 47, received March 20, 1998.
4 Paper No. 48.
5 Paper No. 47, received March 20, 1998.
6 Paper No. 51, mailed September 1, 1998.
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