Appeal No. 96-2673
Application No. 07/851,887
the claim language now before us), appellant has responded, at
page 5 of the principal brief, with an explanation as to why
appellant fails to find any “inconsistency” between the disclosed
and claimed subject matter and the examiner has, again, responded
with silence. Therefore, we have no idea what, exactly, is the
examiner’s position with regard to the rejection of claims 24, 25
and 29 through 31 under the second paragraph of 35 U.S.C. ' 112
and, accordingly, we will not sustain this rejection.
Turning now to the rejection of claims 15, 16, 32, 33, 35,
37 through 41 and 43 under 35 U.S.C. '' 102(b)/103 as being
anticipated by, or, alternatively, unpatentable over, Elms, we
also will not sustain this rejection because the examiner has
failed to establish a prima facie case of anticipation or
obviousness of the claimed subject matter.
The examiner’s whole rationale in making and sustaining this
rejection is to point to our decision of May 31, 1994, wherein we
entered a new ground of rejection, in accordance with 37 CFR
1.196(b), relying on Elms in a prior art rejection made therein.
While the examiner may have been justified in relying on the
rationale in our earlier decision where the claimed subject
matter is identical in both cases, such is not the case here and
the examiner should not blindly parrot a previous decision unless
the basis for that decision still exists.
The language of independent claim 15 has been amended, as
mentioned supra, when discussing the rejection of claims under
7
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