Appeal No. 94-3919
Application 08/391,550
rejection under 35 U.S.C. § 101 and remand the application to the examiner to assess the
new record and make a new determination as to whether the claim on appeal possesses
utility under 35 U.S.C. § 101.
We take no position on the merits of the utility issue raised, either on the previous
record or the newly expanded record. It may be that the method of claim 15 is not directed
to a patentable utility. This assessment, based upon the new record, is best made by the
examiner in the first instance. If the reassessment results in the examiner determining that
the method set forth in claim 15 on appeal lacks utility under 35 U.S.C. § 101, she should
issue an appropriate Office action stating such a rejection. As a second separate
matter, we note that the administrative file of this application indicates that the examiner
only searched the claimed invention in a single class and subclass. In addition, it does not
appear that the examiner has performed a search of any of the electronic databases
available to the examiners. In this regard, we note that the face of the '689 patent indicates
that a more extensive search was performed on very similar subject matter. Upon return of
the application, the examiner should ensure that an appropriate search of the subject
matter claimed in this application has been performed.
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