Appeal No. 2002-0214
Application 08/914,244
the basis that Goodboy is considered to anticipate subject matter encompassed by appealed
claim 1 on which the appealed claims rejected under § 103(a) depend.3 Because we reversed the
ground of rejection under § 102(b), the examiner thus has not provided on this record any
reason(s) why Goodboy provides the factual foundation for an obviousness rejection of appealed
claim 1, of appealed claims dependent thereon and of the other independent appealed claims and
appealed claims dependent thereon which were rejected on the same reference under § 102(b).
See In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) (a reference that does
not anticipate the claimed invention under § 102(b) can still be applied thereto “as evidence of
obviousness under § 103 for all it fairly suggests to one of ordinary skill in the art”).
Therefore, in the absence of the examiner’s consideration of the subject matter of
appealed claims 1 through 3, 7 and 11 through 21 over Goodboy under § 103(a), the issues in this
case with respect to this statutory provision are not ripe for consideration on appeal.
We decline to exercise our authority under 37 CFR § 1.196(b) and enter on the record a
new ground of rejection of appealed claims 1 through 3, 7 and 11 through 21 under § 103(a) as
unpatentable over Goodboy, leaving it to the examiner to apply Goodboy to appealed claims
1 through 3, 7 and 11 through 21 under § 103(a), to reconsider the two grounds of rejection now
of record of the remaining appealed claims under § 103(a) based on Goodboy in doing so, and to
consider whether any other prior art should be applied in this respect.
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to reopen prosecution with respect to all of the claims on
appeal on the basis indicated above, with a view toward placing this application in condition for
decision on appeal with respect to issues under § 103(a).4
Furthermore, when this application is otherwise in condition for allowance, the examiner
3 Answer, pages 4-5.
4 The failure to include an independent claim and claims dependent thereon in a ground of
rejection under § 103(a) which applies thereto will result in reopening of prosecution, either by
the Board under 37 CFR § 1.196(b) or by the examiner on remand, when the rejection of such
claims under a section of § 102 is reversed and the claims are then rejected in one or more new
grounds of rejection on the same or modified grounds under§ 103(a) already of record, thus
unduly prolonging the pendency of the application.
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