Appeal No. 94-1775
Application 07/488,513
a consideration of the prior art. Other values within that range may be considered to have
been unexpected based upon a consideration of the same prior art. If the examiner and
appellants determine that to be the situation, cases such as In re Muchmore, 433 F.2d
824, 826, 167 USPQ 681, 683 (CCPA 1970) in which the court held that claims which
read on both obvious and unobvious subject matter are obvious under 35 U.S.C. § 103
need to be considered. This analysis needs to be made by the examiner and appellants in
the first instance and should not be made by this board in a vacuum. By statue, this board
acts as a board of review.
35 U.S.C. § 7 (“The [board] shall . . . review adverse decisions of examiners upon
applications for patents . . .”).
Upon return of the application, the examiner should consider the patentability of
claims 15 and 16 apart from the method claims pending in this application. If the examiner
determines that claims 15 and 16 are unpatentable, he should issue an appropriate Office
action so that appellants will have a full and fair opportunity to respond to the newly stated
position.
NEW GROUNDS OF REJECTION UNDER 37 CFR § 1.196(B)
Under the provisions of 37 CFR § 1.196(b), we make the following new grounds of
rejection.
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