Appeal No. 1998-2107
Application No. 08/137,624
Rejection #1:
Claims 1-7, 14-20, 22-24 and 58 stand rejected under 35 U.S.C. § 112, first
paragraph. According to the examiner (Answer, page 4):
The terms “Flexible”, [sic] “hybrophilic”, [sic] [and] “polymeric” in claim
59 leave too much conception to the reader. After reading the [sic]
claim 59, one does not know, what exact structure is intended. A U.S.
claim has to be specific. The specification cites only PEG as an
example of glycols poly glocols. Thus, the specification is not
commensurate with the broad scope of the claims. (Also see
arguments in paper #10).
For a number of reasons we are unable to ascertain the basis for the
examiner’s rejection. First, in explaining this rejection the examiner focuses on the
language of claim 59. However, claim 59, which depends from claim 1, is absent
from the listing of claims rejected. Therefore, it escapes us how we are to review
the merits of this rejection when, according to the examiner’s own statement, the
claim containing the "offending” limitations is not included in the rejection.
Second, the examiner refers us (Answer, page 4) to the “arguments in paper
# 10.” Upon review of the examiner’s arguments in Paper No. 109 we find (page 2)
that the statement of the rejection makes reference to “the reasons cited in paper #8
dated 11/06/95.” Upon consideration of Paper No. 810 we are referred to Paper
No. 611.
Clearly, the examiner’s Answer fails to refer to a single previous Office
Action that sets forth an explanation of the examiner’s grounds of rejection. In the
intervening period between Paper No. 6 and the Answer, claims were canceled and
9 The Final Rejection, mailed May 9, 1996.
10 A Non-Final Rejection, mailed November 6, 1995.
10
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