Appeal No. 96-2673
Application No. 07/851,887
showing of facts, or both, not previously of record.2 Appellant
chose the path of further prosecution before the examiner by
amending the claims. However, the examiner, in fact, denied
appellant the opportunity of further prosecution, even though
appellant amended the claims in response to the new ground of
rejection, by merely referring to the Board’s previous decision
and, without explanation and without a clear consideration of the
newly amended claims or of how they might differ from the claims
previously before the Board, holding the claims to be
unpatentable for the reasons stated in the previous decision.
If the examiner feels that a rejection against any of the
pending claims legitimately lies, the examiner, in any possible
further prosecution of this case, is to specifically point out
exactly what claim language is considered non-supportable and why
this is so under any rejection based on 35 U.S.C. ' 112, first
paragraph; is to specifically point out any claim language the
examiner believes to be indefinite and why this is so under any
rejection based on the second paragraph of 35 U.S.C. ' 112; is to
specifically point out how each and every claimed element
corresponds to an element in the prior art reference(s) and/or is
taught or suggested or would have been obvious over the prior art
teachings under any rejection based on 35 U.S.C. ' 102 or
' 103; and is to specifically point out how each and every claim
2 Of course an appellant may also choose to request
reconsideration or modification of a decision under 37 CFR
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