Appeal No. 2003-1650
Application No. 09/411,106
and the Manual of Patent Examining Procedure (MPEP) § 1206 (August
2001).
We observe that neither the final Office action nor the answer
includes a § 103 rejection of dependent claims 71-73, 75 and 82.
It is not apparent from the file record whether the Examiner has
failed to so reject these claims by deliberate intention or by
inadvertent oversight. If this failure is by oversight, the
Examiner should correct it. On the other hand, if the Examiner
deliberately intended for these claims to not be rejected over
prior art, the Examiner should provide the application file record
with a statement to that effect and an explanation as to why these
particular claims are considered to patentably distinguish over the
prior art.
To the extent that no new ground of rejection is involved (see
MPEP § 1208.01), the Examiner’s response to this remand may be
in the form of a supplemental Examiner’s answer (see 37 CFR
§ 1.193(b)(1) and MPEP § 1211). Any such supplemental answer, in
addition to rectifying the previously discussed infirmities, must
contain a complete and meritorious response to the Appellants’
reply brief including a rebuttal to each argument presented
therein. Finally, it is appropriate to stress that, if the
Examiner’s response to this remand involves a new ground of
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