Appeal No. 2002-0099 Page 3
Application No. 08/864,009
THE ISSUE
The examiner suggests that “the metes and bounds of the instant claimed
invention” are unclear (Paper No. 19, page 5). However, no appealed claim stands
rejected under 35 U.S.C. § 112, second paragraph; accordingly, the issue of claim
indefiniteness is not before us.
Furthermore, the specification stands objected to “as failing to provide proper
antecedent basis for the claimed subject matter” (Paper No. 19, page 3). According to
the examiner, “[t]here lacks antecedent basis [in the specification] for the recitation of
“rheologically effective amount” [in claims 1 through 46]” (Paper No. 19, page 4). Again,
however, the examiner has not entered a rejection of any claim on this ground. The
examiner has not rejected any claim or claims under 35 U.S.C. § 112, first paragraph,
for lack of adequate written, descriptive support in the original specification for the
limitation “rheologically effective amount.” Accordingly, the issue of written descriptive
support is not before us, and we have no authority to review the examiner’s mere
objection to the specification. See 35 U.S.C. § 134(a) (an applicant for patent, any of
whose claims has been twice rejected, may appeal from the decision of the [examiner]
to the Board of Patent Appeals and Interferences, having once paid the fee for such
appeal); MPEP § 2163.06 (a rejection of claims is reviewable by the Board of Patent
Appeals and Interferences, whereas an objection and requirement to delete new matter
is subject to supervisory review by petition under 37 CFR § 1.181. If both the claims
and specification contain new matter either directly or indirectly, and there has been
both a rejection and objection by the examiner, the issue becomes appealable and
should not be decided by petition); and In re Hengehold, 440 F.2d 1395, 1403, 169
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