Appeal No. 96-2673 Application No. 07/851,887 showing of facts, or both, not previously of record.2 Appellant chose the path of further prosecution before the examiner by amending the claims. However, the examiner, in fact, denied appellant the opportunity of further prosecution, even though appellant amended the claims in response to the new ground of rejection, by merely referring to the Board’s previous decision and, without explanation and without a clear consideration of the newly amended claims or of how they might differ from the claims previously before the Board, holding the claims to be unpatentable for the reasons stated in the previous decision. If the examiner feels that a rejection against any of the pending claims legitimately lies, the examiner, in any possible further prosecution of this case, is to specifically point out exactly what claim language is considered non-supportable and why this is so under any rejection based on 35 U.S.C. ' 112, first paragraph; is to specifically point out any claim language the examiner believes to be indefinite and why this is so under any rejection based on the second paragraph of 35 U.S.C. ' 112; is to specifically point out how each and every claimed element corresponds to an element in the prior art reference(s) and/or is taught or suggested or would have been obvious over the prior art teachings under any rejection based on 35 U.S.C. ' 102 or ' 103; and is to specifically point out how each and every claim 2 Of course an appellant may also choose to request reconsideration or modification of a decision under 37 CFR 10Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007