Appeal 2006-2978
Application 10/299,239
§ 102(b) as anticipated by Knight. A review of the Office Actions preceding
the Examiner's Answer indicates that the Examiner believes that the subject
matter of claims 15 and 24 was obvious over Knight in view of a second
reference. The statement of the §102 rejection appearing in the Final
Rejection from which the Appellants have taken this appeal does not include
a discussion of claims 15 and 24.1 As such, it appears that the Examiner is
providing a new basis of rejection for claims 15 and 24.2 The Appellants
indicated in the principal Brief that the subject matter of claims 15 and 24
was to be separately treated (Br. 4). However, the Appellants have not
indicated in the Reply Brief that the subject matter of claims 15 and 24
should be separately treated.
The Examiner should clarify the record as to whether or not the
subject matter of claims 15 and 24 is newly rejected. The Examiner should
take appropriate action consistent with current examining practice and
procedure to notify Appellants of the proper status of the rejected claims.
The Examiner should provide Appellants with the opportunity to
clarify the present record and to present separate arguments for subject
matter of claims 15 and 24 if appropriate.
1 The Examiner has relied on the statement of the §102 rejection appearing
in the Office Action mailed December 23, 2003. The §102 rejection
appearing in this Office Action did not include a discussion of claims 15 and
24.
2 The Examiner's discussion of claims 15 and 24 in the Answer does not
appear to address the concerns previously raised in the prior Office Actions.
To support a rejection under §102, the Examiner must indicate where the
claimed features are expressly described or are inherently present in the cited
reference. In the present case, the Examiner must explain why the features
previously considered obvious are now anticipated by the cited reference.
3
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