Appeal No. 2000-2156 Page 3
Application No. 08/431,727
those references was included in the statement of any rejection on appeal. As stated in
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970),
Where a reference is relied on to support a rejection, whether or not in a
"minor capacity," there would appear to be no excuse for not positively
including the reference in the statement of the rejection.
Here, Chapter 11, “Prodrugs versus soft drugs,” and U.S. Patent No. 5,760,216 are not
included in the statement of any rejection before us, and we shall not consider those
references further.
The Rejections
Claims 123, 124, and 110 through 115 stand rejected under 35 U.S. C. § 112,
first paragraph, as based on a non-enabling disclosure; and under 35 U.S. C. § 112,
second paragraph, as not particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention. Claims 123, 124, and 110 through
115 further stand rejected under 35 U.S. C. § 103 as unpatentable over U.S. Patent
No. 3,884,905.
Deliberations
Our deliberations in this matter have included evaluation and review of the
following materials: (I) the instant specification, including all of the claims on appeal;
(II) applicant’s Appeal Brief (Paper No. 49), including the publications by Nicholas S.
Bodor referenced therein, and the Reply Brief (Paper No. 51); (III) the Final Rejection
(Paper No. 43) and the Examiner’s Answer (Paper No. 50); (IV) U.S. Patent
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