Ex Parte Ahluwalia - Page 2

                Appeal 2007-2600                                                                             
                Application 10/354,216                                                                       

                      We remand the application to the Examiner for consideration and                        
                explanation of issues raised by the record.  37 C.F.R. § 41.50(a)(1) (2007);                 
                Manual of Patent Examining Procedure (MPEP) § 1211 (8th ed., Rev. 5,                         
                August 2006).                                                                                
                      The Examiner changed the statutory basis of the ground of rejection                    
                of claims 2 through 11 as anticipated by United States Patent 5,965,257 to                   
                Ahluwalia, issued October 12, 1999, from 35 U.S.C. § 102(e) to 35 U.S.C.                     
                § 102(b) in the Answer in response to Appellant’s contention in the Brief                    
                that the former statutory provision was inappropriate “because the Appellant                 
                is the inventor of the Ahluwalia reference, and the instant application and the              
                cited Ahluwalia reference are commonly owned” (Answer 2-3 and 4-5; Br.                       
                10 and n. 1, citing 35 U.S.C. § 102(e)(2)).  In entering this new ground of                  
                rejection in the Answer, the Examiner denied benefit of priority for appealed                
                claims 2 through 11 to parent Application 09/663,225 (parent Application),                   
                filed September 15, 2000, under 35 U.S.C. § 120 on the basis the parent                      
                Application does not “provide support or enablement” under                                   
                35 U.S.C. § 112, first paragraph, “for one or more claims of this application”               
                because “no surfactant or microcells are discussed in the prior filed                        
                application” (Answer 3).  Independent claim 2, on which all other claims                     
                directly or ultimately depend, encompasses a fire resistant fabric material                  
                comprising at least a substrate coated with a structural material comprising,                
                among other things, a surfactant component and surfactant-generated                          
                microcells.                                                                                  
                      Appellant contends the parent Application, which matured into U.S.                     
                Patent 6,586,353, claims benefit of Provisional Application 60/168,057                       


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