Appeal No. 2000-1241
Application No. 08/424,156
Claims 1, 2, 4, 6-8, 10-14, and 17-19 stand rejected under 35 U.S.C. § 112, first
paragraph as based on a disclosure which is not enabling.2 Claims 1, 2, 4, 6-8, 10-14,
and 17-19 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite
for failing to particularly point out and distinctly claim the subject matter which
appellants regard as the invention. Claims 1, 2, 8, and 10-14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Kondo in view of Kubota. Claim 7 stands
rejected under 35 U.S.C. § 103 as being unpatentable over Kondo and Kubota in view
of Kamada. Claims 4, 6, and 17-193 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kondo and Kubota in view of Official Notice.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 14, mailed Aug. 5, 1997) for the examiner's reasoning in support of
2 We note that the examiner initially set forth this rejection as a new grounds of rejection in the
examiner's answer. Appellants responded by amending each of the three independent claims and filing a
reply brief. The examiner mailed an advisory action on Oct. 29, 1997, indicating that the amendment
would be entered and the status of all the claims as rejected, without addressing which grounds they are
rejected. Additionally, the examiner merely states that the reply brief is "entered and considered but no
further response by the examiner is deemed necessary" in a communication mailed Dec. 20,1999.
Therefore, we assume that the examiner has not waivered in maintaining all of the rejections as set forth
in the answer, yet the examiner has not clearly indicated how he would address the claims as amended,
or if the amendments to the claims would change any of the rejections.
Appellants have not disputed the status of the case procedurally, therefore, rather than remand
the case, we will decide the appeal on the merits as presented by the examiner and appellants.
3The examiner indicated that claims 15-17 were rejected, but claims 15 and 16 were canceled and
claims 18 and 19 were added prior to the final rejection.
3
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