Appeal No. 2000-2156 Page 5
Application No. 08/431,727
specification as it would be interpreted by one of ordinary skill in the art. In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Keeping those principles in
mind, we note the definition of “soft drug” in the specification, page 2, lines 16 through
24, and applicant’s discussion of the “inactive metabolite” approach for designing “soft
drugs” in the specification, page 2, line 25 through page 3, line 7. This record does not
reflect that the examiner considered applicant’s definition of “soft drugs” in the
specification, or that the examiner read applicant’s claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. Had the
examiner done so, we believe that the rejections entered under 35 U.S.C. § 112, first
paragraph; 35 U.S.C. § 112, second paragraph; and 35 U.S.C. § 103(a) would have
been resolved before forwarding the case to us for a disposition.
In Paper No. 50, section (10) entitled “Grounds of Rejection,” the examiner made
clear that all of the appealed claims were rejected under 35 U.S.C. § 112, first
paragraph; 35 U.S.C. § 112, second paragraph; and 35 U.S.C. § 103(a). According to
the examiner, “[t]hese rejections are set forth in prior Office action, Paper No. 43 dated
02/04/99" (Paper No. 50, page 3, penultimate paragraph). But the examiner went on to
restate each rejection, providing reasons different from those set forth in the prior Office
action (Paper No. 50, page 3, last paragraph; and page 4, first two paragraphs). This
caused a substantial amount of confusion because it is unclear, on the record, whether
the reasons set forth in the Examiner’s Answer (Paper No. 50) supplant those set forth
in the prior Office action or add to those set forth in the prior Office action. In any
event, we reviewed all of the reasons proposed by the examiner and find that they all
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