Appeal No. 96-1313
Application 08/202,536
William F. Smith, Administrative Patent Judge, dissenting.
I dissent from the action taken today by the majority on
both procedural and substantive grounds.
Procedure
By statute this board serves as a board of review, not as
a de novo examining tribunal. 35 U.S.C. § 7(b)("The Board of
Patent Appeals and Interferences shall, on written appeal of
an applicant, review adverse decisions of the examiners upon
application for patents . . . "). Here, the examiner's
adverse decision is that claims 10-18 and 25-27 are
unpatentable under 35 U.S.C. § 103. In making a rejection of
claims pending in a patent application, the Patent and
Trademark Office (PTO) must state the reasons for such
rejection and provide "such information and references as may
be useful in judging of the propriety of continuing the
prosecution of [the] application." 35 U.S.C. § 132.
Here, all of the claims stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner relies upon
Morgan. No other evidence is relied upon by the examiner in
stating the rejection on pages 3-5 of the Examiner's Answer.
The significant difference between the procedure required by
-15-15
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