Appeal No. 96-1313
Application 08/202,536
separately argue the patentability of the claims on appeal was
based on the examiner’s reasoning. As a result, while the
majority states at page 11 of their majority opinion that
claims 10-18 and 25-27 are subject to a new ground of
rejection, the majority has not explained why any claim beyond
claim 10 is unpatentable under 35 U.S.C. § 103. The failure
of the majority to explain their reasons why the remaining
claims are unpatentable is in violation of 35 U.S.C. § 132.
Under 37 CFR § 1.196(b), appellants have two options.
They can file an amendment and/or a showing of facts not
previously of record and have the matter reconsidered by the
examiner. 37 CFR § 1.196(b)(1). Alternatively, appellants
may seek rehearing from this merits panel based upon the same
record. 37 CFR § 1.196 (b)(2).
Considering the second option first, if appellants seek
rehearing from this merits panel of the decision of the
majority rejecting claims 11-18 and 25-27, what would
appellants ask? For the majority to provide reasoning in
support of its conclusion of unpatentability? It is difficult
to determine what other argument appellants could reasonably
make. Why should appellants be placed in a position where
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