Appeal No. 95-3175
Application 08/124,361
We are always reluctant to enter new grounds of rejection because the appeal should be the end
of prosecution. That is especially true in this case where this is the third continuation application.
Nevertheless, neither appellants nor the patent system are served by granting a patent where the best prior
art has not been considered. The duty of the Patent and Trademark Office is to issue valid patents. See
Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278 (1877) ("[In the Patent Office, applicant's]
claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled
to."); Burns v. Meyer, 100 U.S. 671, 672 (1880); Graham v. John Deere Co., 383 U.S. 1, 18 (1966)
("[T]he primary responsibility for sifting out unpatentable material lies in the Patent Office. To await
litigation is--for all practical purposes--to debilitate the patent system."). A new ground of rejection is
warranted in the present case.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Webb, Fogg et al. (Fogg)
(U.S. Patent 5,337,236, issued August 9, 1994, filed May 21, 1990, eight days before the effective filing
date of this application), Gulas et al. (Gulas) (U.S. Patent 4,755,832, issued July 5, 1988), and Whitaker
(U.S. Patent 4,685,061, issued August 4, 1987). We intentionally have not considered the patentability
of the dependent claims because it is not our responsibility to examine all the claims in the first instance, and
because it is our experience with Rule 196(b) rejections that examiners adopt whatever rejection has been
made without trying to find better art and without listening to arguments or showings of facts to overcome
the rejection. The examiner should independently decide whether the dependent claims are patentable.
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