Appeal No. 2001-0624 Page 3
Application No. 08/204052
amounts to a new ground of rejection. As set forth in 37 C.F.R. § 1.193(a)(2)
“[a]n examiner’s answer must not include a new ground of rejection….”
Accordingly, we vacate the rejection of claims 109 and 119-134 under 35
U.S.C. § 112, first paragraph and remand the application to the examiner for
further consideration.
II. Defective Appeal Brief:
According to appellants (Brief, page 7), “[t]he issue raised in this appeal is
whether the Examiner erred in finding that the applicants’ specification failed to
enable the practice of claims 109 and 119-134, under 35 U.S.C. § 112, first
paragraph.” In response, the examiner finds (Answer, page 2, ¶ 6), “appellant’s
[sic] statement of the issues in the brief is correct.” This, however, is not the
case before us on appeal.
According to the Answer two issues are presented for our review. First,
the rejection of claim 134 under 35 U.S.C. § 112, first paragraph, “as containing
subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at the
time the application was filed, had possession of the claimed invention.” Answer,
page 3. Second, the rejection of claims 109 and 119-134, under 35 U.S.C. §
112, first paragraph as containing subject matter which was not described in the
specification in such a way as to enable one skilled in the art to which it pertains,
or with which it is most nearly connected, to make and/or use the invention.”
Answer, page 4.
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