Appeal No. 2001-0546
Application 07/842,722
Appellants state (RR1-2): "The prosecution progress up
through this, 1/23/03 affirm in part, reverse in part and new
ground of rejection decision that is to be reviewed, may be
considered to be, that all rejections on art are of the 35USC103
[sic] type, that no art has appeared that would indicate that the
concept is not patentable and that there are still concerns with
enablement with respect to some claims."
This appears to be a mere statement by appellants rather
than an argument about something overlooked or misapprehended in
our decision. However, the statement "that no art has appeared
that would indicate that the concept is not patentable" (RR2)
ignores the fact that numerous claims stand rejected over prior
art and that it is the claimed subject matter, not whatever
appellants consider to be the "concept," that must be shown to be
patentable. Further, the statement "that there are still
concerns with enablement with respect to some claims" (RR2) is
erroneous because the § 112, first paragraph, rejection is based
on lack of written description, not lack of enablement.
Appellants state that "[t]here are some concerns" (RR2) and
(RR2): "It is a first concern that in the record assembled
through the long pendency including five examiners and two
continuations, there is marginal, if any, record of continuity
and recognition of the previous examiner's work in the support
being relied on for the rejection."
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