Appeal No. 97-3671
Application 08/266,977
The failure to clearly state and present the ground of
rejection as we have found above alone constitutes a
sufficient ground for reversal. In the context of an
obviousness rejection under 35 U.S.C. § 103, the examiner has
an affirmative duty, under Graham v. John Deere, 383 U.S. at
17, 148 USPQ at 467, to make underlying factual findings
including the scope and content of the prior art, and the
differences between the applied prior art and the claimed
invention. The lack of specificity deprives the appellant of
a suitable rebuttal and makes the rejection vague and
uncertain on review. Absent sufficient findings, it cannot be
said that the examiner has sufficiently made out a prima facie
case of obviousness.
Alternatively, we assume that the examiner withdrew the
ground of rejection asserted in the final Office action and
entered a new ground of rejection in the examiner’s answer
relying only on Milnes, Langhans, Clark, and Pfost. However,
although in this presumed setting the identity of the
references is no longer unclear, the rejection is still
nonetheless unsupported by sufficient factual findings
regarding the scope and content of the prior art and the
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