Appeal No. 2001-0352
Application 08/872,097
Respecting each rejection under 35 U.S.C. § 103(a), the initial question
presented is whether the examiner properly established a prima facie case of
obviousness. On this record, the Appellants do not rely on any rebuttal evidence, i.e.,
objective evidence of non-obviousness, which would serve to rebut a prima facie case.
DELIBERATIONS
Our deliberations in this matter have included evaluation and review of the entire
prosecution history of this application including specifically the instant specification; the
Appellants' Appeal Brief (Paper No. 12); the Examiner's Answer (Paper No. 13); and the
above-listed prior art references.
DISPOSITION
On consideration of the record, including the above-listed materials, we vacate
the rejections under § 103(a) and remand this application to the Examiner for further
consideration consistent with this opinion.
DISCUSSION
The Appellants have made the following comment under the heading “Grouping
of Claims” on page 5 of the Appeal Brief.
Despite the fact that the dependent claims address a wide variety of different and
advantageous features claimed in combination, the Examiner rejected these
claims with little detailed explanation other than to generally suggest the further
combination is obvious without any specific teaching of the claimed combination,
or the desirability of making the modification suggested by the Official Action. In
light of this rejection, a concise response is difficult. (Appeal Brief, page 5, line
19 – page 6, line 2).
The Appellants further comment that the final rejection did not follow M.P.E.P
§706.02 (relating to the proper manner in setting forth a §103 rejection). (Appeal Brief,
page 6, lines 12-13).
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