Appeal No. 2001-0784
Application No. 08/755,844
reasonable expectation of obtaining a significant increase in
loading of the active material as in EPA ‘453.9.
Accordingly, we remand the instant application to the examiner
for a determination of whether EPA ‘453.9 constitutes prior art
within the purview of 35 U.S.C. § 102 (f). We expect appellants to
cooperate by furnishing a copy of EPA ‘453.9 to the examiner so
that she may determine the identity of the inventive entity
involved.
If the examiner determines that EPA ‘453.9 constitutes prior
art under 35 U.S.C. § 102 (f), she should reject appellants’ claims
for obviousness under 35 U.S.C. § 103 over EPA ‘453.9 in view of
Jacobs for the reasons indicated above. See Ex parte Andresen, 212
USPQ 100, 102 (Bd. Appl. 1981).
Since we are remanding the involved application to the
examiner, the examiner should also consider reinstating her prior
obviousness-type double patenting rejection against appellants’
claims based upon the claims of Kumar et al. (5,658,497) taken with
Jacobs. This rejection should be premised essentially upon the
same reasoning noted above with regard to EPA ‘453.9 since both
references apparently have similar disclosures.
Additionally, we find that the phrase ”without substantial
prior draining” renders the claims indefinite. This finding is
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