Appeal No. 1998-0456 Page 4
Application No. 08/454,706
under 35 U.S.C. § 103(a), also included a rejection of claims
9, 12, and 13 under 35 U.S.C. § 112, second paragraph. The
rejection, however, only made specific reference to
independent claim 9, and was silent as to the reasons for
rejecting independent claims 12 and 13. In the brief (page
18), appellant "agreed" to make an amendment to claim 9 "upon
return of the file to the Examiner" to overcome the rejection
under 35 U.S.C. § 112, second paragraph, and listed the
specific wording of the proposed amendment. In the examiner's
answer, the examiner maintained each of the rejections set
forth in the final rejection and added a new ground of
rejection (pages 3 and 4) of claims 12 and 13 under 35 U.S.C.
§ 112, second paragraph, in which the reasons for rejecting
claims 12 and 13 under 35 U.S.C. § 112, second paragraph were
provided. In the reply brief (pages 1 and 2) appellant
"agreed" to make an amendment in response to the new ground of
rejection set forth in the examiner's answer, and provided the
specific language of the proposed amendment to claims 12 and
13. The supplemental examiner's answer only included the
rejection of the claims under 35 U.S.C. § 103(a), and did not
refer to either the proposed amendment included with the reply
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