Appeal No. 2001-0121 Page 9
Application No. 08/212,185
Upon return of the application, the examiner should take a step back and
reevaluate the claimed invention, together with the prior art, the disclosure of the
invention found in appellant’s specification and the prosecution history.
Thereafter, if the examiner finds that a rejection is necessary, the examiner
should issue an appropriate Office action setting forth such a rejection, using the
proper legal standards and clearly setting for the facts relied upon in support of
such a rejection. In this regard, we remind the examiner as set forth in In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989):
[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. . . . An essential purpose of
patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of
claim scope be removed, as much as possible, during the
administrative process.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 7), “[t]he disclosure of Fu differs
from the rejected claims in that no potential drug was added in the assays.”
Nevertheless, the examiner asserts (id.) that it “would have been obvious to the
person of ordinary skill in the art at the time the invention was made to modify
the assays disclosed by Fu et al. to include the introduction of other substances,
meeting the limitation of the claims of ‘adding a potential drug’.”
In addition, the examiner argues (Answer, page 16) that appellants have
“not challenged or otherwise traversed” the examiner’s Official Notice, “that it
would have been obvious to modify the assays as disclosed by Fu et al. to
include the introduction of other substances, including small molecules….” We
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