Appeal No. 2001-0933 Page 9
Application No. 09/205,530
Finally, in our view, examiner has raised a new point in the Examiner’s
Answer. The entire discussion that deals with the calculation of the amount of lower
alkanol ester of a fatty acid used in Hazen’s examples is new and should have and
could have been raised earlier. In the Final Rejection, the claims were rejected over
Hazen in view of Killick. Examiner appeared to admit that Hazen did not suggest
the claimed percentage of fatty acid ester because Killick was applied as showing
using ethyl esters at 50-80% of the adjuvant composition (see Final Rejection, p. 3).
Appellant argued that “[n]owhere in the disclosure of [Hazen] is it taught or
suggested that the claimed amount of ester is to be used, i.e., from 50 to 95% by
weight” (Paper no. 8, Response to Final Rejection, p. 2) and understood Killick to
have been applied to overcome that lack teaching or suggestion in Hazen.
Subsequently, Killick was withdrawn (see Advisory Action). Then, for the first time in
the Examiner’s Answer, examiner makes the case, through a calculation, that the
claimed percentage of fatty acid ester is in fact covered by the Hazen disclosure.
Examiner has changed the thrust of the rejection. Examiner’s reliance on Hazen to
now argue that the claimed percentage of fatty acid ester is in fact disclosed is new
and could have been raised earlier. We do not find that appellant has had a
reasonable opportunity to address this new point. See In re Kronig, 539 F.2d 1300,
190 USPQ 425
(CCPA 1976). That opportunity is now provided as a result of our vacating of the
rejections and remanding the application to the examiner for further clarification.
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