Appeal No. 1998-2002
Application 08/690,016
examiner that no further response by the examiner is deemed
necessary."). According to MPEP § 1208.03 (7th ed., July
1998), if a response is deemed necessary, the examiner is to
reopen prosecution. Finally, unlike the dissent, the majority
is of the opinion that a remand would not cure the
deficiencies of the examiner’s rejection. Therefore, a
reversal of the obviousness-type double patenting rejection is
considered proper at this time.
B. Rejection under 35 U.S.C. § 112, second paragraph
Claims 33-40 and 42-57 are rejected under 35 U.S.C. §
112, second paragraph, for improperly reciting a method
limitation. According to the examiner (Answer, pp. 4-5):
The recitation of “nickel-carbonyl supported on a
carrier” is tantamount to a method limitation in an
apparatus claim, in that nickel-carbonyl would not
be formed until and unless the impure hydrogen gas
stream contaminated with carbon monoxide is
contacted with the elemental nickel in the first
reaction zone. It is well-settled that method
limitations are improper in apparatus claims. In re
Peters, 1923 C.D. 291.
As pointed out by appellants, In re Peters, 1923 C.D.
291, involved a rejection under 35 U.S.C. § 102, not 35 U.S.C.
§ 112,
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