Appeal No. 2001-0931 Page 7
Application No. 09/104,476
Accordingly we vacate the examiner’s rejection, and remand the application to
the examiner to provide him with an opportunity to reevaluate his position in light
of the correct legal standards.
If upon review of the file wrapper and other relevant document, the
examiner remains of the opinion that the claims on appeal are unpatentable, he
should issue an appropriate Office action that sets forth the facts and reasons
used in support of such a rejection.
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
The examiner presents three issues under 35 U.S.C. § 112, second
paragraph. First, the examiner finds (Answer, page 6) the phrases “being
adapted to filter and filtering” and “being adapted to react and reacting” as they
appear in claim 1 are “awkward and improper”. Second, the examiner questions
(Answer, bridging paragraph, pages 6-7), “how one would filter RBC’s from
plasma which does not contain RBC’s.” Third, the examiner states (Answer,
page 7), “[c]laim 5 is queried, see page 8[,] line 23 of the specification.”
At page 9 of the Answer, the examiner states “[t]his rejection is not
addressed” by appellants. Therefore, appellants’ Brief is defective. Appellants’
Brief must be responsive to every ground of rejection stated by the examiner.
See The Manual of Patent Examining Procedure (MPEP) § 1206 (8th ed, August
2001) (“[w]here an appeal brief fails to address any ground of rejection,
appellants shall be notified by the examiner that he or she must correct the
defect by filing a brief (in triplicate) in compliance with 37 CFR § 1.192(c).”).
Instead of proceeding with an Answer, the examiner should have notified
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