Appeal No. 94-3359
Application 07/941,566
is not found in the prior art, is to search thereafter a
reasonable number of non-elected species representative of the
generic invention. Suffice it to say that the examiner has both
failed to adequately set forth in writing, on the record, the
nature of the requirement for an election of species and has
failed to follow the proper procedures for examination after
requiring an election of species.
We have not been assisted by appellants' complete
silence on the record on this issue. Specifically, although
appellants were entitled to respond to such new points of
argument as were raised in the various prior office actions and
the examiner's answer, here, appellants chose not to respond to
the examiner's answer in any fashion. Thus, we could take
appellants' silence on the issues of restriction/election of
species and which claims are properly before us as a concession
that the examiner's position is correct. Such a position would
result, however, in the piecemeal administration of justice.
This is not to the say that an examiner is not free to
change his or her mind and withdraw the rejection of a particular
claim or claims from which an appeal has been taken. However,
whenever the examiner determines a previously made rejection to
be unsound or no longer relevant, the record should be clear and
set forth the reasons why the rejection is no longer considered
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