Appeal No. 95-4609
Application 08/263,903
Since we agree with appellants that the examiner’s
proposed combination of references still lacks the requisite
teaching of the determining step of claim 1, we do not sustain
the rejection of claim 1 as proposed by the examiner. Since all
the claims stand or fall together, we do not sustain the
rejection of any of claims 1-7. Therefore, the decision of the
examiner rejecting claims 1-7 is reversed.
We note that the examiner has indicated that because
appellants had proposed amendments to the claims to overcome the
prior art rejection that they have admitted that “the prior art
does read on the claimed invention” [answer, page 5]. We simply
observe that an applicant is not estopped from changing his
strategy during the course of good faith prosecution before the
examiner. A willingness to amend the claims does not prevent
appellants from challenging the rejection as they have done here.
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