Appeal No. 2005-2686
Application No. 09/879,823
Appellants argue that the rejection of claim 61 under the
first paragraph of 35 U.S.C. § 112 was improperly sustained
because claim 61 does not recite the elements for which no
support in the specification was found in the original decision
[request, page 7].
We agree with appellants and regret the oversight. We
vacate that portion of our decision which held that claim 61
failed to comply with the first paragraph of 35 U.S.C. § 112.
Therefore, the examiner’s rejection of claims 47-62 under the
first paragraph of 35 U.S.C. § 112 is still sustained with
respect to claims 47-60 and 62-67, but is not sustained with
respect to claim 61.
Appellants argue that the Board acknowledged that the
examiner did not rely on the best portions of Von Kohorn and that
the Board relied on a different portion of Von Kohorn in
sustaining the examiner’s rejection. Appellants argue that the
decision should be designated as a new ground of rejection so
that appellants have a fair opportunity to respond to these new
findings [request, pages 7-9].
Although a reference cited as prior art is considered to be
cited in its entirety, the designation of a new ground of
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