Appeal No. 1998-2598
Application No. 08/549,078
improper legal standard may have been applied. As required by Wertheim, there must be
section 112 support for the patented invention, rather than simple determination that the
material now supporting a rejection was present in the relevant application.
According to current USPTO computerized records, the application in question,
Ser. No. 07/254,463 was refiled (as a file wrapper continuation) as application
07/474,675. The records show that the status of application 07/474,674, which
presumably contains the file wrapper of Ser. No. 07/254,463, is “Lost.” Even if we could
obtain Ser. No. 07/254,463 and make requisite factual findings, in the first instance, with
respect to the question of section 112 support of the invention of Butts ‘231 (or Butts ‘473),
it would not be proper for us to do so. Appellant must have the opportunity to respond to
any factual findings in support of a rejection. Moreover, the requisite factual findings, in the
first instance, should be made by one who is familiar with the lexicon of the relevant art.
We are left with the question of proper disposition of the instant application: to
remand the application for further prosecution before the examiner, or to reverse the
rejection before us. We think reversal is the best course of action because the evidence
relied on -- which is lacking in the showing of the scope and content of the prior art -- is
insufficient to support a case of prima facie obviousness. Whether Butts ‘231 is a
reference depends upon the subject matter described in application 07/254,463; it may
well be the case that Butts ‘231 can only be “secret prior art” with respect to the instant
invention.
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