Appeal No. 2001-0980
Application 08/953,146
DISCUSSION
Our consideration of the examiner’s position on appeal has been needlessly
hampered by the manner in which the examiner drafted the Examiner’s Answer. The
examiner states at page 3 of the Answer that the prior art rejection is “set forth in prior
Office action, Paper No. 5.” Turning to Paper no. 5, we find that the claims are rejected
“for reasons of record.” It is only from a review of the first Office Action (Paper No. 2)
that we are able to glean the substance of the examiner’s rejection.
The examiner’s reference to a multiple Office actions in the Examiner’s Answer
for a statement of rejection is manifestly improper. As set forth in the Manual of Patent
Examining Procedure (MPEP) § 1208 examiners may incorporate in the Answer only
those statements of grounds of rejection which appear in a single prior Office action.
While ordinarily the examiner’s action would necessitate a remand so that a proper
Examiner’s Answer could be prepared and entered in the file, our review of the case
has revealed that the examiner’s rejection is without factual support. Under these
circumstances, we will not remand the application but proceed to a decision on the
merits.
Claim 1 requires, inter alia, the presence of polyethylene glycol having a
molecular weight of about 400 to 600. The examiner stated at page 2 of the first Office
Action that Singleton teaches a composition which contains polyethylene glycol. While
original claim 1 did not require a polyethylene glycol having a particular molecular
weight, original claim 5 did. The examiner’s first Office action did not account for the
molecular weight requirement of claim 5. This mistake on the part of the examiner was
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