Appeal No. 1996-3623
Application No. 08/114,546
would have reasonably understood the metes and bounds of the invention, we will not
sustain the rejection of claims 1-32.
35 U.S.C. § 103
Initially, we note that two new grounds of rejection under 35 U.S.C. §§ 102 and 103
over the Regan reference were made in the Examiner’s Answer. As a result thereof
appellants elected to attempt to antedate the Regan reference rather than to argue the
merits of the rejections. Appellants filed two declarations with the Reply
Brief, one by each of the inventors, with supporting exhibits, in an attempt to establish
conception and reduction to practice prior to the date of publication of the Regan
reference.
In the Letter mailed Aug. 20, 1996 the Examiner indicated that these new grounds
of rejections were withdrawn and that claims 1-32 remain rejected under 35 U.S.C. § 103
as set forth in the “Office action filed 4/19/95, paper no. 7."2
As a result of our review, we note that neither appellants nor the Examiners have
addressed the propriety of the remaining rejections under 35 U.S.C. § 103 in light of the
established date of invention prior to September 1992. This would appear to effectively
2 We assume that the Examiner intended to refer to either the final rejection mailed Aug. 28, 1995,
paper no. 9 or to the Examiner’s Answer mailed Feb. 2, 1996, paper no. 13 since the first Office action,
paper no. 7, was not incorporated into the Answer. Furthermore, we assume that the Examiner also
intended to maintain the rejection of claims 1-32 under 35 U.S.C. § 112, second paragraph.
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