Appeal No. 94-4428
Application 08/024,034
is unpatentable under either 35 USC
§ 102(b) or alternatively under 35 USC § 103. The examiner
may also wish to extend his search to determine whether or not
it would have been obvious to form the alpha alumina layer
described in Strangman by a process of heat treating a
deposited amorphous film. These questions are best resolved
at the examiner’s level because the examiner has greater
accessibility to the prior art, and appellant has the
opportunity to argue the issues absent the restrictions which
tie the examiner’s hands regarding a rejection made by the
Board under 37 CFR § 1.196(b).
We remind the examiner of his ability to reopen
prosecution at any time prior to issue for the purpose of
ensuring the validity of the claims. As stated by the Supreme
Court in Graham v. John Deere, 383 U.S. 1, 18, 148 USPQ 459,
467 (1966):
[I]t must be remembered that the primary
responsibility for sifting unpatentable
material lies in the Patent Office. To
await litigation is - for all practical
purposes - to debilitate the patent system.
In summary, each of the examiner’s stated rejections
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