Appeal No. 2001-1733 Page 4
Application No. 09/055,505
opportunity to clearly set forth his position, we vacate the pending rejection and remand
the application to the examiner for further consideration.
We encourage the examiner to take this opportunity to step back and review the
record, together with the relevant prior art. If after this review, the examiner remains of the
opinion that the claims on appeal are unpatentable, he should issue an appropriate Office
action clearly setting forth the facts and reasons used in support of such a rejection. If the
examiner maintains a rejection under 35 U.S.C. § 103, we suggest the examiner review
MPEP § 706.02(j) for a model of how to explain a rejection under this section of the
statute. Adherence to this model will of necessity require that the examiner consider the
patentability of the claims in an individual manner, and set forth the facts and reasons in
support of why individual claims are unpatentable.
OTHER ISSUES
While we take no position on the merits of the claimed invention, we offer the
following comments to assist the examiner in his reevaluation of the claimed invention.
We note the Examiner’s Answer (page 3) directs our attention to Paper No.
16 for the statement of the rejection. At page 3 of Paper No. 16, the examiner states
“Ramstack et al. disclose a column 1, line 23 to column 3, line 22 various encapsulated
micro particles containing various active agents.” This is the examiner’s only statement
as to how Ramstack may relate to appellants’ claimed invention. Clearly absent from
this statement is any discussion of the second component of appellants’ claimed
composition, specifically “a carrier which may contain pharmaceutically-acceptable
adjuvant, comprised of a blend of uncapped and end-capped biodegradable-
biocompatible copolymer.” We remind the examiner that “[a]ll words in a claim must be
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007