Appeal No. 2001-1733 Page 2
Application No. 09/055,505
REPRESENTATIVE CLAIM
Claim 1 is illustrative of the subject matter on appeal and is reproduced below:
1. A composition for the burst-free, sustained, programmable release of active
material(s) over a period from 1-100 days, which comprises: (1) an active
material and (2) a carrier which may contain pharmaceutically-acceptable
adjuvant, comprised of a blend of uncapped and end-capped biodegradable-
biocompatible copolymer.
PRIOR ART
The examiner relies on the following prior art:
Ramstack et al. (Ramstack) 5,650,173 Jul. 22, 1997
GROUND OF REJECTION
Claims 1-49, 51-132 and 134-177 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ramstack.
Claims 50 and 133 have been cancelled. See Brief (Paper No. 19), page 1.
For the following reasons we vacate the pending rejection and remand the
application to the examiner for further consideration.
PROCEDURAL ERROR
As appellants make clear (Supplemental Reply Brief, Paper No. 23, page 1),
“[a]ccording to MPEP [§] 1208.03[ ]and 37 CFR [§] 1.193(b)(1) [2000], after a reply brief
is filed,
‘The primary examiner must either acknowledge receipt and entry of the
reply brief or withdraw the final rejection and reopen prosecution to
respond to the reply brief. A supplemental examiner’s answer is not
permitted….’”
The rule, therefore, provides for two alternatives, (1) acknowledge receipt and entry of
the reply brief without further comment on the merits of the claimed invention, or (2)
reopen prosecution to address the merits of the claimed invention. The rule clearly sets
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