Appeal No. 1999-1155
Application No. 08/241,253
U.S.C. § 112, first paragraph, but maintained the rejection under 35 U.S.C. § 103,
refusing to consider the declaration as “the elected invention is drawn to compounds;
therefore the declaration emphasizing ‘increased relaxi[v]ity’ pertains to non-elected
claims.” (advisory action, paper no. 20, May 20, 1997). In addition, the examiner
declined to enter the proposed amendment to the claims.
A second advisory action (paper no. 22, October 18, 1997) was issued in
response to appellant’s letter requesting reconsideration (paper no. 21, August 26,
1997). The second advisory action indicated that the previously proposed amendment
to the claims would be entered upon the filing of an appeal. Meanwhile, appellants
submitted their Brief on Appeal addressing the rejection of claims 1 through 12, 18 and
19 under 35 U.S.C. § 103 only (paper no. 24, October 20, 1997).
The rejection of claims 1 through 12, 18 and 19 under 35 U.S.C. § 103 as
unpatentable over Parker and Tweedle was maintained in the Examiner’s Answer
(paper no. 25, January 16, 1998). In addition, an unspecified number of claims were
newly rejected under the first and second paragraphs of 35 U.S.C. § 112, despite the
examiner’s assertion that the Examiner’s Answer “does not contain any new ground of
rejection” (paper no. 25, page 8, January 16, 1998). Appellants submitted a Reply Brief
(March 19, 1998) addressing several points of argument raised for the first time in the
Answer, as well as the two new rejections under the first and second paragraphs of 35
U.S.C. § 112, but the examiner made no response.
BACKGROUND
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