Appeal No. 2005-0590
Application 09/854,435
Sparer et al. (Sparer) 4,549,010 Oct. 22, 1985
Heller et al. (Heller) 5,968,543 Oct. 19, 1999
The examiner has rejected appealed claims 1 through 14 and 17 through 19 under 35
U.S.C. § 103(a) as being unpatentable over Heller combined with Sparer (answer, page 3).1
Appellants state that they “will argue the patentability of appealed claims 1-14 and 17-19
together” (brief, page 3). Thus, we decide this appeal based on appealed claim 1. 37 CFR
§ 1.192(c)(7) (2003); see also 37 CFR § 41.37(c)(1)(vii) (effective September 13, 2004; 69 Fed.
Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief for a complete exposition thereof.
Opinion
The review of the ground of rejection of claim 1 requires that we first interpret this claim
by giving the language thereof the broadest reasonable interpretation in light of the written
description in appellants’ specification as it would be interpreted by one of ordinary skill in this
art, without reading into the claim any limitation or particular embodiment disclosed in the
specification. See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Priest,
582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978). The structural formulae and accompanying
formula member and subscript definitions depict any polyorthoester falling within formula (I),
wherein formula member “A” must be “R1” and “R4” to the extent of “at least 0.1 mol% of
the A units,” with no further limitation on the number of units of each of the components “A is
R1, R1, R1, or R1” selected to constitute 100 mol% of the “A units,” and wherein subscript “n” is
1 The examiner states that the ground of rejection is set forth in the prior Office action mailed
February 26, 2003. At page 2 of this Office action, the examiner refers to the prior Office action
mailed September 27, 2002. While the examiner has not stated the ground of rejection in the
answer or incorporated the ground of rejection from a single prior Office action as permitted by
the practice in Manual of Patent Examining Procedure §§ 1208 (8th ed., Rev. 2, May 2004;
1200-17), we will not in this instance remand the application to the examiner for the purpose of
preparing a supplemental examiner’s answer to cure this deficiency because we find consistent
statements of the ground of rejection in the above two Office actions, and so have considered the
ground of rejection advanced on appeal.
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