Appeal No. 2001-0784
Application No. 08/755,844
based upon the suggestion in appellants’ specification (page 3,
lines 28-30) that drainage from the pores prior to drying is
permissible as long as it is less than 60%. In our view, this
disclosure is inconsistent with claiming “without substantial prior
draining” since drainage approaching 60% would ordinarily be
considered substantial. Since we are remanding this application to
the examiner to address other matters, rather than apply a new
ground of rejection under 37 CFR 1.196(b), we direct the examiner
to reject the claims under 35 U.S.C. § 112, second paragraph, as
being indefinite for the reason stated above.
For the foregoing reasons, the decision of the examiner is
reversed, and the application is hereby remanded to the examiner,
via the Office of a Director of the involved Technology Center, for
appropriate action consistent with our opinion. To summarize, the
examiner is to consider imposing three rejections based,
respectively, on (a) 35 USC §§ 102(f)/103, (b) the obviousness-type
double patenting doctrine, and (c) 35 USC § 112, second paragraph.
This application, by virtue of its “special” status, requires
immediate action on the part of the examiner. See MPEP § 708.01
(8TH Ed., Aug, 2001). It is important that the Board of Patent
Appeals and Interference be promptly informed of any action
affecting the appeal in this case.
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