Appeal No. 95-2440
Application 07/705,726
make a § 102 rejection using pages 19 through 21 of the
specification. We must emphasize that it is not the role of
the Board of Patent Appeals and Interference to conduct
examination in the first instance while an application is on
appeal.
Upon return of this application, the examiner is to
reconsider the entire merits of the § 102 rejection consistent
with our opinion. If the examiner remains of the opinion that
the claims are still unpatentable over appellants' admitted
prior art, he or she need to make appropriate findings of fact
regarding each and every claim limitations.
PRIOR ART REJECTION UNDER § 103
The examiner has rejected claims 46 through 50, 52, 57
through 61, 63 and 72 through 98 under 35 U.S.C. § 103 as
being unpatentable over Curran in view of Wehner, Potts and
Wolf.
In rejecting the claims, the examiner acknowledged that they
"do not stand or fall together." See Answer, page 2. In
other words, the examiner has agreed to treat the claims at
issue separately. The examiner, however, focused only on the
limitations of claim 46. Even when appellants filed a Reply
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