Appeal No. 96-1313
Application 08/202,536
I believe the majority has made a second, separate
procedural error in making the new ground of rejection under
37 CFR § 1.196(b). As stated at page 4 of the majority
opinion, the majority's "affirmance" of the examiner's
decision rejecting the claims under 35 U.S.C. § 103 is
premised upon appellants' statement in the Appeal Brief that
the claims on appeal stand or fall together. Thus, the
majority has limited their discussion to one claim, claim 10
on appeal. In my view, the rule which provides for separate
argument of claims before this Board, 37 CFR § 1.197
(2)(c)(7), applies only when we are reviewing the examiner's
decision as expressed in the Examiner's Answer. It does not
apply when the Board makes a new ground of rejection under 37
CFR § 1.196(b), as here. This follows since an appellant must
make this election in drafting the Appeal Brief. That
election is based, in part, upon the perceived strength or
weakness of the examiner’s case at that point in time.
Here, appellants have not had an opportunity to consider
the new reasoning supplied by the majority. It is improper
for the majority to bootstrap an “affirmance” of all claims on
totally new reasoning when appellants’ election to not
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